After receiving comments from the public on its proposed rules, the Patent Office today issued the final rules for post-grant review and other proceedings. Coats + Bennett partook in the public comment process. In those comments, accessible here, Coats + Bennett urged the Patent Office to amend its proposed rules to prohibit a patent owner from amending patent claims that are currently being asserted against a defendant-petitioner. With the patent owner barred from retroactively fixing validity issues with its already-asserted patent, a defendant would have greater motivation to institute post-grant review in order to invalidate asserted claims rather than reluctantly settling in the face of high litigation costs.

The Patent Office, however, did not adopt our suggestion into the final rules for post-grant review. The Office stated that amending its proposed rules as suggested would prove unnecessary because a defendant-petitioner has intervening rights that protect him or her from liability for claims amended during post-grant review. The Office's full response to our suggestion appears here, on page 119, and has been reproduced below:

Comment 74: A few comments recommended that the Office prohibit patent owners from amending patent claims that currently are being asserted against a defendant-petitionerbecause the patent owner may file a reissue application to amend the claims.

Response: This suggestion is not adopted. Such a requirement is unnecessary in view of35 U.S.C. 318(c), as amended, and 35 U.S.C. 328(c) because any amendment of a patent claim gives rise to intervening rights in the same manner as amendments inreexamination proceedings that mature into certificates or in a reissue applications thatresult in reissued patents.”

Coats + Bennett respects the Patent Office's decision in this regard. But, rather than forming bright-line rules that would provide a defendant with certainty about the implications of instituting post-grant review, the Patent Office has unnecessarily punted the determination of those implications to the courts. Indeed, a defendant-petitioner will only be only protected by intervening rights for past liability in certain circumstances, depending on for example whether or not a court decides amended claims are "substantially identical" to those of the original patent. Worse, whether or not the defendant-petitioner will be protected by intervening rights for future liability depends on a court's discretionary administration of equity principles.

Faced with uncertainty about whether or not intervening rights will in fact apply, and with even more litigation,  post-grant review may not really be the true, cheaper alternative to litigation that it could have been.