Patent Office Litigation
What is Patent Office Litigation?
The America Invents Act of 2011 has ushered in a variety of ways to either challenge or strengthen patents at the U.S. Patent and Trademark Office. These Patent Office Litigation proceedings include:
An inter partes review enables a third party to challenge one or more claims in an issued patent at the United States Patent & Trademark Office. IPR was designed to replace inter partes reexamination practice.
Post grant review provides an opportunity for a third party to petition the United States Patent & Trademark Office to review one or more claims in an issued patent. The window within which the third party can file a petition is limited to the first nine months following issuance of the patent or reissuance of broadened patent claims. However, the proceeding provides for a scope of challenges broader than that allowed for in inter partes review.
The purpose of a covered business method patent review is to provide a separate vehicle for accused infringers to challenge certain types of business method patents while providing an alternative to costly litigation in courts. This review mostly follows the procedures for post-grant review, with main differences including grounds for standing, timing, and prior art requirements, along with unique stay and estoppel provisions.
A derivation proceeding provides a safeguard to help ensure that the first person to file a patent application is actually a true inventor. Only a patent or application containing one or more claims having an effective filing date on or after March 16, 2013 will be eligible for a derivation proceeding.
Interferences remain a fact of life despite the switch from a first-to-invent system to a first-inventor-to-file system, effective March 16, 2013. Two changes that became effective September 16, 2012 are:
- For interferences declared after September 16, 2012, appeals from the Patent Trial and Appeal Board (PTAB) will go before a district court, not the Federal Circuit.
- The PTAB can dismiss an interference and allow a party to petition for post grant review instead
A request for ex parte reexamination may be filed anonymously by any party, including the patent owner, at any time during period of enforceability of a patent. A reexamination will commence only if the request raises at least one substantial new question of patentability on the basis of patents and printed publications.
Why Sterne Kessler?
- 90+ inter partes review proceedings for both petitioners and patent owners
- 400+ reexaminations under our belt
- 50+ interference proceedings
- Technical skills to deconstruct patents for challenge or defense
- Strong understanding of the USPTO and PTAB
- Significant foreign opposition experience
- Interdisciplinary teams that merge technical, USPTO and District Court trial experience