In less than four minutes, you can learn or refresh yourself on the basics of IPRs. Topics include:
· An overview of the patenting process and ways in which patent disputes can arise
· A description of how the PTAB is structured and how IPRs function
· High-level strategic considerations for both patent holders and petitioners to help position themselves for success throughout the IPR process
INTRODUCTION TO IPRS
Since 2012, Inter Partes Reviews, or IPRs, have emerged as one of the most significant developments in intellectual property law. The patenting process begins when an inventor has an idea for a patent, describes it in detail in an application, and submits it to the Patent Office. The Patent Office will only issue a patent based on a determination of novelty and non-obviousness over identified prior art.
In the marketplace, disputes can arise when a patent holder believes a competitor infringes an issued patent or attempts to license patents to others in the industry. If a dispute cannot be resolved, patent litigation often ensues between the parties. If litigation occurs, a defendant can look for additional or new prior art to assert claims of invalidity. Given a presumption of patent validity, the burden for invalidating a patent in litigation is relatively high. Additionally, in view of the nature of patent litigation, a determination of validity can be time- and cost-intensive.
With the institution of the America Invents Act, Congress provided the Patent Office with a new trial procedure for evaluating the patentability of a previously issued patent. This new trial proceeding is administered by the Patent Trial and Appeal Board, or PTAB. Each petition is assigned to a three-judge panel of administrative patent judges. These post-grant proceedings include inter partes reviews, or IPRs.
IPR proceedings are a hybrid of contentious litigation and rules-focused patent procedures. Here are three important considerations:
A petition has a limited word count so you have to be very selective in the prior art presented and how the claims are challenged.
After an IPR has concluded, you are prevented from raising arguments in litigation that you raised or could have raised in the IPR.
Because you can only file a petition within one year of litigation commencing, you have to get the best art ready for your petition very quickly.
For those who are challenging a patent, the substance of the petition can make or break your IPR. The PTAB serves as a gatekeeping function to determine whether there is a reasonable likelihood that there is a question of patentability based on the merits of the petition. If the petition is granted, the IPR will be instituted.
From the patent owner’s perspective, patents are statistically likely to be cancelled after a petition has been granted and an IPR has been instituted. Accordingly, Patentees can improve their chances of success by responding to the Petition quickly, effectively, and accurately in an effort to have the petition denied. Responses can include procedural, substantive, and technical considerations. An effective IPR team should include individuals with litigation experience, technical expertise, as well as an intimate knowledge of the rules-driven administrative nature of IPRs, to handle proceedings before the PTAB.
Regardless of which side of the patent dispute you’re on, Knobbe Martens may be able to assist you. Knobbe Martens. IP for a new age.