Because of the America Invents Act (“AIA”) of 2012, there are a host of new challenges available to address patent infringement threats. These challenges can be brought at the Patent Trial & Appeal Board (“PTAB”), and they should be thoroughly considered as part of a litigation strategy.
PTAB proceedings are now frequent alternatives to challenges in federal court. Many litigants prefer to launch challenges at the PTAB where the boards are made up of experts in patent law and procedure. PTAB proceedings will be handled by jurists with scientific backgrounds who may be better suited to understand certain types of technology. Often, federal courts will “stay” proceedings to permit PTAB proceedings to run their course.
Some of the more commonplace patent challenge devices now are:
- Post Grant Review (“PGR”), which is available to challenge patents within the first nine (9) months after patent issuance, if it is “more likely than not” that at least one claim is unpatentable, on nearly any ground, including public uses, sale activities, or other public disclosures.
- Inter Partes Review (“IPR”), which challenges are limited to statutory requirements of novelty and non-obviousness under 35 U.S.C. §§ 102 or 103. Challengers can use printed publications and patents.
- Pre-Issuance Submissions, allow third parties to make challenges, anonymously, in a pending application.
- Ex Parte Reexaminations, allow challenges that are mostly hands-off once filed.
- Derivation Proceedings, are less common challenges to decide questions of inventorship, including near-simultaneous inventors who file for the same invention.
A more thorough discussion of these devices is found here: southerncaliforniapatents.com/articles/2013/07/15/24/
Our attorneys are experienced patent litigators and available to discuss the pros and cons of using these devices as part of a patent litigation strategy. Do not hesitate to contact us for a free initial consultation.