1. Presentation at Biotechnology/ Chemical/Pharmaceutical Customer Partnership Program Partnership Program March 15, 2005 POST-GRANT REVIEW: A COMPARISON OF USPTO STRATEGIC PLAN PROPOSAL, BILL INTRODUCED IN CONGRESS, AND PROPOSALS BY THE AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION AND THE INTELLECTUAL PROPERTY OWNERS ASSOCIATION James Toupin USPTO General Counsel

2. USPTO Plan Boucher-Berman Congressional Bill AIPLA Public Proposal IPO Public Proposal Time For Filing by Public 1 year after issue 9 months Other Filings Allowed if Requestor is being sued for infringement or genuinely concerned with infringement suit Allowed within 6 months after patentee alleges infringement; allowed at patentees discretion; Court cannot order. Allowed only at Patentees discretion; Court cannot order. Not Permitted Threshold Showing Required Not Required; Director may dismiss if request lacks substantial merit. RequiredRequired Identity of Real Party in Interest Required Not Required Required Patentee Response before Institution of Proceeding Allowed but not required YesYes Grounds asserted (enforceability excluded by all) Any No best mode; No 102(c); No 102(f); No 102(g) No best mode No anticipation or obviousness except by patent or printed publication No best mode No 102(f) No 102(g) Waiting Period before Instituting Review None 9 months after patent grant Multiple Requests by Same Party Generally not permitted. Must be merged. Not permitted. Proceeding Governed by The Board 3 APJs appointed by Director “one or more APJs”

3. USPTO Plan Boucher-Berman Congressional Bill AIPLA Public Proposal IPO Public Proposal Discovery Controlled by APJ – can go to limit set by civil rules Controlled by APJ – can only go beyond cross examination “in the interest of justice.” Controlled by APJ – can only be beyond cross examination “in the interest of justice.” Limited to cross- examination Length Designed to conclude 1 year after institution 1 year hard limit, may be extended to 18 months. 1 year with patent- term-adjustment after 1 year. Evidence after Threshold Showing made Case-by-caseNoneNone Burden of Proof Preponderance of Evidence Clear and Convincing Claim amendments 1 as of right; more for good cause shown More than 1 possible SettlementAllowed Other USPTO Proceedings May be merged at Director’s Discretion All Post-Grant proceedings consolidated unless APJ’s decide otherwise. Stayed.Allowed Filing of Infringement Suit Does not stay review Stays review if suit preceded filing. Patent owner’s duty of disclosure As during Federal Court proceeding. Hearing If deemed necessary As-of-rightAs-of-rightAs-of-right Appeal Federal Circuit Only Estoppel What could have been raised. What was raised.