Eugene Perez weighs in on the “Restoring America Invents Act”
Eugene Perez weighs in on the “Restoring America Invents Act”, proposed by Senators Leahy (D-VT) and Cornyn (R-TX), in an article from IPWatchdog, Inc. "Stakeholders Speak: Leahy Bill to ‘Restore the AIA’ is Too Unbalanced to Pass"
Eugene's quote includes: "I think if you ask a petitioner about the “Restoring the America Invents Act,” that petitioner would say that the amended law is true to the spirit of the original AIA. However, I would think that patent owners would find many of these changes as being pro-petitioner and even unfair. It is one thing to codify In re Aqua Products to say the burden is on the patent owner to prove the patentability of any substitute claim (modified §316(e)), or codify patent owner estoppel of the USPTO’s Rule 42.73(d)(3) (modified §315(e)). But eliminating the Director/PTAB discretion in Section 314, and thus eliminating the Fintiv precedential decision, can restore the Petitioner’s ability to attack the same patent claim twice. Using a printed publication in an IPR is one thing, but then using a different version of that prior art (e.g., commercial sale of a product corresponding to the printed publication) means that the patent owner has to be victorious twice. It is also unclear as to how multiple petitions for the same patent claim are going to be handled since the modified Section 314 states that if the petition meets the requirements, trial “shall be instituted”. Perhaps the institution rate will jump closer to the rates of the early years of when the AIA was implemented. Finally, the inclusion of double patenting as a ground for an IPR (modified §311) gives a petitioner another avenue of attack, which likely will reduce the number of ex parte reexamination requests for the same patent."