Once the United States Patent and Trademark Office (USPTO) grants a patent, the patent owner can then rest assured that his or her patent rights are safe, barring any challenges that arise in patent litigation, right? While that may seem like a logical assumption, it is not correct. In 2011, the America Invents Act created new procedures called “post-grant proceedings” that allowed members of the public to challenge the validity of issued patents, the most popular of which is known as inter partes review (IPR). While post-grant proceedings are complex, an Alabama patent litigation attorney can help you make sense of them and decide whether you should use them.
What Is Inter Partes Review?
IPRs are litigation-like administrative proceedings conducted before the Patent Trial and Appeal Board (PTAB), a semi-judicial body within the USPTO. They allow anyone — even disinterested members of the public — to challenge the validity of an issued patent. They are called “inter partes” because they are adversarial proceedings between the challenger (known as the “petitioner”) and the patent owner. During IPR, the petitioner presents his or her arguments as to why the patent at issue should not have been granted, while the patent owner defends the validity of the patent. At the resolution of the IPR, the PTAB will issue a decision finding that the challenged patent claims are either valid or invalid (or a mixture of the two).
Advantages of Inter Partes Review
While IPR may seem similar to ordinary district court patent litigation, there are a number of key features that make it a more attractive option in some cases:
- Cost: IPR and other post-grant proceedings are generally less expensive to pursue than district court litigation
- Speed: The PTAB is obligated by statute to render a final decision within 12 months of the date the IPR is instituted — far sooner than district court rulings
- Technically trained judges: The administrative judges of the PTAB have technical training, unlike most district court judges, giving them greater insights into the issues being presented
- Limited scope: The scope of IPR is limited solely to patent validity, making it more streamlined than district court litigation
How to Use Inter Partes Review
IPR proceedings are extremely popular and there are a wide variety of reasons why a party might want to use them. However, two stand out from the others:
As a Defense to a Patent Infringement Suit
If you are sued for patent infringement, you can attempt to invalidate the patent being asserted against you by filing an IPR petition. In many cases, the patent infringement suit will be stayed pending the resolution of the IPR. However, if your IPR is unsuccessful, you will be barred from using the same invalidity arguments you made in the IPR in the district court action.
To Take Out a Competitor’s Patent
If your attorney discovers a high-risk patent when conducting a patent search or as the result of a freedom to operate analysis, you can use IPR to attempt to invalidate the patent, thereby reducing the risk of future infringement litigation.
Contact an Alabama Patent Litigation Attorney to Fine-Tune Your Strategy
If you have been sued for patent infringement or you think there is a high risk that you might be sued, IPR may be an effective strategy. However, IPR is not appropriate for all parties or in all situations. For more information about IPR strategy, please contact an Alabama patent litigation attorney at AdamsIP by calling 251-289-9787 or by using our online contact form. We assist clients throughout the state including Mobile, Huntsville, and Birmingham.