Daniel Schwartz Quoted in Law360
“USPTO Regs Could Impose Steep Fees on Patent Challengers”

Intellectual Property partner Daniel Schwartz was quoted extensively in the February 8 edition of Law360. The article covered the U.S. Patent and Trademark Office’s (USPTO) recently released proposed rules for administrative procedures to challenge issued patents as required by patent reform law. Part of the proposed rules for contested cases include guidelines for post-grant and inter partes reviews. According to the article, post-grant reviews allow parties to contest the validity of a patent within nine months of issuance by the USPTO, whereas inter partes reviews can contest patents issued more than nine months ago. The USPTO plans to impose fees for each procedure, with the size of the fee corresponding to the number of claims involved.

According to Dan, the amount of time involved for both post-grant and inter partes reviews could be lengthy. Post-grant and inter partes reviews will involve a sequencing of discovery, in which the patent owner will be able to identify the parties it wants to depose and then address a petition, the petitioner will follow up with a response, and the patent owner will then get a chance to reply, he said. “A lot of things have to happen in a relatively short period of time. The rules appropriately provide for some expanded discovery, but the sequencing of the discovery may make it hard for the USPTO board to meaningfully rule within the 12 to 18 months as required by the AIA.”

Dan worries that there may be a larger influx of these proceedings than the USPTO is able to currently handle. “If there really is an explosion in the number of cases filed, I don’t think the USPTO will have the man power and brainpower to address all the issues,” he remarked. “Just like how it has taken the agency a while to deal with the backlog of patent applications, the same could happen here if increased proceedings are filed.”