Writing for Patently-O, Charlez Gholz, the head of Oblon Spivak's Interference Section, discussed post-grant review proposals in the Patent Reform Act of 2009.
According to Gholz, the PTO officials involved in administering patent interference matters had expected post-grant review proceedings to be governed by 37 C.F.R. 41, (Practice Before the Board of Patent Appeals and Interferences) Subpart D (Contested Cases). However, proposed 35 USC 326 provides that the Director shall prescribe regulations governing post-grant review proceedings.
Gholz goes on to say:
"Whether the cancellation proceedings are to be governed by Subpart D or by a different set of rules is not an insignificant point. Proposed 35 USC 326(a)(3) in both bills would require the Director to prescribe regulations "setting forth procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceedings, and [that] the procedures for obtaining such evidence shall be consistent with the purpose and nature of the proceeding." However, while that language could be read as mandating real discovery (i.e., discovery similar to the discovery available in district courts), the bills then go on to mandate that, "In carrying out paragraph (3) [i.e., in providing the rules for discovery], the Director shall bear in mind that discovery must be in the interests of justice," which might be read a giving the PTO room to provide for only the extremely limited kind of discovery that is currently available in interferences."
Furthermore, proposed 35 USC 326(b) also requires that the Director issue regulations providing "for filing under seal exempt from publication requirements" and for "protective orders governing the exchange and submission of confidential information", contrary to current interference practice. The same section also provides that "regulations under subsection (a)(1)...shall provide for discovery upon order of the Director," imposing the burden of showing entitlement to discovery on the party seeking discovery, in contrast to district court procedure.
Leave a comment