A recent series of decisions by the Patent Trial and Appeal Board has articulated different standards for ex parte patent examinations and contested cases (including IPRs and PGRs). Specifically, the standard for a reference to qualify as a “printed publication” in patent examination is significantly lower than what is required in contested proceedings.
These differing standards have created considerable discussion in patent practitioner circles, and in a new Law360 article, Womble Bond Dickinson IP litigation attorney Brent Babcock discusses their ramifications.
Babcock tells Law360 that in light of the rulings, in some circumstances a patent challenger may opt for an ex parte reexamination in lieu of an IPR.
“If you're not going to get it through the IPR gauntlet at the institution stage because you just won’t be able to muster the evidence that it’s a printed publication, then you might consider another avenue, which would be an ex parte reexam, where the examiner is not held to that kind of rigorous standard,” he said.
Babcock also said that having different standards makes sense because parties involved in IPRs and other contested patent challenges generally have more resources—and more motivation—to present evidence to support their arguments.
“I think this decision reflects the disparate resources available to the examiner compared to a petitioner,” he said. “An examiner doesn't have the time or the money to go out and search for unusual art or to prove whether something was a printed publication or not.”
Also, click here to read Babcock’s client alert on “Examiner in Ex Parte Patent Prosecution Held to a Lower Standard for Showing “Printed Publication” Than Required of Petitioner in Contested Cases, Like IPRs and PGRs”.
Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.