Today EFF submitted a letter to Senators Leahy and Specter calling their attention to a portion of the Draft Judiciary Committee Report of the Patent Reform Act of 2007 which has the potential to kill EFF's Patent Busting Project.

The Report states that “Section 5 of the Act creates a new post-grant review (PGR) system for United States patents, replacing and eliminating inter partes reexamination, in a new chapter 32 in title 35.” This statement is followed by footnote 87:

Ex-parte reexamination, based on a request by the patentee, is retained. See new Section 303(a) of the Act. However, third parties may no longer request an ex-parte reexamination. Thus, third parties wishing to challenge the patent will use the new post grant review system; patentees wishing to have additional art considered by [sic] will use the old ex-parte reexamination system.

This sounds reasonable, but the implications turn out to be deeply problematic.

The form of PGR currently proposed in the Senate’s bill is an inadequate substitute for reexamination because it would only permit non-profit organizations like EFF to question the validity of issued patents within twelve months of issuance. Since the true effect of a patent on the public is frequently not realized until well after the first year of its term, there would be no way for us to then have any concerns we may have regarding its validity addressed.

Finally, since there is only a proposal for a second opportunity to challenge the patent if an individual or entity is economically harmed by a patent, 501(c)(3) entities like EFF would have difficulty meeting that standard and would in many cases be prevented from standing up against invalid patents.

To be clear, EFF supports the Patent Reform Act generally and the creation of a post-grant review procedure, but this should not mean the elimination of the ex parte or inter partes systems because the PGR system cannot meet the public’s needs on its own.

EFF's Patent Busting Project is one of a number of public-interest projects that use the reexamination process to defend the public against the most dubious patents. Four of our five petitions for reexamination have been granted, and EFF expects the last will be after the PTO has had an opportunity to review it (it was filed last week). One of the first reexamination requests submitted by EFF has already resulted in the PTO revoking the patent.

The public has a right to defend itself against patents that should never have been granted, and organizations like EFF exist to assist in this process. Reexamination proceedings are essential for us to continue this work.