Posts Tagged: "quiet title"

The Multiple Proceedings rule has become the essence of uncertainty. What exactly does it mean? §325(d) gives the PTO Director the authority to refuse a petition when “the same or substantially the same prior art or arguments” were previously presented. For IPRs like this one to proceed despite numerous prior rulings in various fora upholding a patent’s validity is a travesty. The facts of this case underscore the mischief that can befall a patent owner under the current practice of the PTAB, enabled by the Federal Circuit… I recently wrote, “[t]he fight goes on to invalidate claims until the patent owner loses and the claims are invalidated.” But that is precisely what the § 325(d) Multiple-Proceedings rule was intended to prevent. And this needs to stop.

A quiet title seems an absolute prerequisite to the enjoyment of an exclusive right guaranteed by the Constitution. Unfortunately, a quiet title in a patent today simply does not happen if you are actually lucky enough to have obtained a patent on a commercially valuable innovation… The problem with patents in the post-AIA era is the system and judges that implement the system do not apply basic property laws, despite the fact that the statute says that patents are to have the attributes of property. Title in patents never seem to quiet any more – ever. Indeed, it is particularly difficult, if not impossible, to quiet title now thanks to the existence of inter partes review (IPR), a type of post grant challenge to the patent that can literally be brought at any point in time during the life of the patent.

While there are many fixes that need to happen to bring about even a modicum of fairness and justice to the PTAB processes, the most important fix that must occur is a change to the law that recognizes a quieting of title for patents. Serial challenges against the same patent must end, period… If a party challenges a patent in a post grant proceeding notice should be provided to the industry, such as through the Patent Office Gazette and/or other mechanisms, providing any and all interested parties the ability to similarly file a challenge against the same patent with a certain number of days – perhaps 90 days or maybe 120 days. Then once the time period for challenges has run the PTAB can determine which claims to institute, if any, and the case can proceed.