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The patent system is often criticized for producing too many invalidpatents. Wait a minute — invalid patents? The U.S. Patent and TrademarkOffice issues invalid patents, you ask? You bet. Probably everyTuesday. These patents are the reality for a system of limited resources. Patentexaminers have limited time to review each application and limitedaccess to relevant prior art. The issuance of invalid patents is aproblem that can never be completely eliminated. But the system can be improved to address the problem and minimize itseffects. On one side of the equation, Congress can increase theresources available to the office for the examination process. Lastyear, the 108th Congress made substantial progress on this front bypassing the Fee Modernization Act (ultimately incorporated into theconsolidated appropriations bill). The act substantially increases the fees associated with filing andprosecution of patent applications and enables the office to procuremore resources for examination of applications, including desperatelyneeded additional examiners. It also enables the Patent Office to pursuemany of the initiatives detailed in its 21st Century Strategic Plan. In theory, the increase in examination resources will reduce the numberof invalid patents issued by the office. New examiners, once trainedappropriately and sufficiently, should eliminate some of the excessiveworkload placed on the current corps. And the new Patent Officefacilities, which include enhanced technology and access to prior art,should help as well. But no matter the level of funding made availableto the office, complete elimination of invalid patents cannot beachieved absent perfect knowledge of the prior art. Try as they might,not even Congress can create such an environment. So the other side of the equation must be explored. Once steps havebeen taken to minimize the number of invalid patents being issued by thePatent Office, how can we minimize the effects of those that arereleased? If we must accept the reality of invalid patents, how shouldthey be handled? What legal tools should be made available? To whomshould access to these tools be provided? Validity of a patent can, of course, always be challenged in patentlitigation. But, considering the high costs associated with patentlitigation, an alternative is needed. Post-grant review by the PatentOffice is often seen as an attractive solution. These procedures, ineffect, allow the Patent Office to conduct a second examination of apatent. Limited procedures exist today in which the validity of apatent can be reviewed within the Patent Office (e.g., interferences,re-examination requests). In fact, third parties can challenge thevalidity of a patent through the inter partes re-examination procedurecreated by the American Inventors Protection Act (AIPA) of 1999. A very strong adversity to the existing procedure exists, though, due toits various drawbacks, including a broad estoppel effect and lack ofdiscovery and cross-examination mechanisms. Indeed, the AIPA procedureis viewed by many in the patent community as severely flawed. As aresult, it has failed in meeting the goal of providing an efficientprocess to review the validity of issued patents. Not surprisingly,with five years of data in hand, the Patent Office recently reported toCongress that the actual number of inter partes re-examination requeststhat have been filed severely lags behind initial projections. Underutilization is an understatement. A better system is needed. Now, the 109th Congress appears ready and willing to address the issue.At the end of the last session, Rep. Howard Berman introduced the PatentQuality Assistance Act of 2004. The PQAA provides several patent reformmeasures, including a post-grant review procedure that allows thirdparties to challenge the validity of issued patents within the PatentOffice. The proposed procedure includes various improvements over theAIPA procedure, including limited discovery and cross-examinationmechanisms. Berman introduced the PQAA with an eye toward the currentCongress: “[w]e introduce this bill at the end of … [the 108th]Congress with the intent of framing the debate going into the 109thCongress, and with every intention of passing legislation in the nexttwo years.” Any bill introduced in this Congress will likely be received favorablyby the patent community. Last session, patent stakeholders resoundinglysupported the fee increases because they were seen as necessary toimprove quality. This desire for an overall increase in patent qualitystill lingers. In December, the Patent Office expressed a desire for anew post-grant review procedure in its report to Congress on the AIPAinter partes procedure. Also, the American Intellectual Property LawAssociation (AIPLA) has proposed its own procedure and, throughout thisyear, is holding a series of town meetings across the country to discussthe subject. The AIPLA hopes to use the meetings as a means to solicitinput from stakeholders in anticipation of congressional hearings. So the stage appears to be set. While the details of a post-grantreview procedure need to be thoroughly considered and debated publicly,the implementation of a new procedure now appears only to be a questionof when. The issue will be debated by this Congress and, with any luck,our patent system will improve as a result.

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