speeding up invalidity
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Speeding It Up atthe USPTO
July 2013
July 23, 2013
Speeding Up Invalidity
Patent Office Invalidity Proceedings
• Post-Grant Review (PGR)
• Inter Partes Review (IPR)
• Covered Business Method Review (CBM)
• (Derivation Proceedings– not going to discuss)
Patent Office Invalidity Proceedings
PGR IPR
≤ 9 MonthsFrom Issue
>9 Months OR After PGR
GAP!
Patent Office Invalidity Proceedings
PGR IPR
≤ 9 MonthsFrom Issue
>9 Months OR After PGR
IPRTechnical
Amendment to AIA Fixed
Patent Office Invalidity Proceedings
• Old news-- why are you now mentioning?
– Implementation of concrete rules, guidelines, and practices has now occurred.
– After the initial knee-jerk reaction against these proceedings when the AIA was implemented, opinion is now changing to look favorably upon these proceedings.
Advantages Over Federal Court
• Lower Evidentiary Standard for Invalidity– USPTO- preponderance of the evidence– Court- clear and convincing
• Claim Interpretation More Favorable– USPTO- broadest reasonable interpretation– Court- patent owner in a Markman hearing can
ask for a narrower interpretation to avoid prior art
• 3-judge panel are all experienced patent attorneys
Advantages Over Federal Court
• Less expensive– Cost is 10% of a federal lawsuit– Will likely stay a co-pending federal lawsuit
• Fast– Completed in 18 months after filing petition– Discovery is automatic– Patent owner’s first 60-page response is due in 3
months with no extensions!
The Default Timeline for IPR, PGR, and CBMDate Event
Petition filed
3 months later Patentee’s Preliminary Response (optional)
3 months later Decision on Petition (by claim and by grounds); and Patentee’s 3-month discovery period begins
3 months later(Due Date1:)*
Patentee’s Response & Motion to Amend Claims is due; and Petition’s 3-month discovery period begins.
3 months later(Due Date 2:)*
Petition’s Reply to Response and Opposition to Motion to Amend Claims is due, and Patentee’s 1-month discovery period begins.
1 month later(Due Date 3:)*
Patentee’s Reply to Motion to amend, and the period for Observations & Motions to Exclude Evidence begins.
3 weeks later(Due Date 4:)*
Petitioner’s motion for observation regarding cross-exam of reply witness due. Request for oral argument due.
The Default Timeline for IPR, PGR, and CBMDate Event
2 weeks later(Due Date 5:)*
Patentee’s response to observation due. Opposition to motion to exclude due.
1 week later(Due Date 6:)*
Reply to opposition to motion to exclude due.
Set on Request(Due Date 7:)*
Oral Argument
12 months after Decision on Petition
Final Written Decision Due
*The parties may stipulate different dates for Due Date 1 through 5, but in no case can those dates be extended beyond Due Date 6 without authorization.
What About the Disadvantages? • Estoppel
– Estoppels arise on challenged claims, not entire patents
– Estoppels for a CBM review is limited to arguments that were actually raised
– Is estoppel a real concern when the odds for invalidating in court are worse?
• Claim Amendments – Are not automatic – Amendments must address grounds raised in
petition or they will be rejected
What About the Disadvantages?
• Availability – PGR/IPR/CBM- not available if you file a
complaint declaratory judgment before filing petition (excludes counterclaims)
How to Use
• Litigation– Quickly knock out invalid patents
• Snow Plow– Clear the way for new products
Critical details about Post-Grant Review
• Available for patent if filed under first-inventor-to-file (AIA) regime
• Must be filed within 9 months following the issue date or a broadening reissue date
• Can challenge a patent for most anything except obvious-type double patenting
• Should raise all possible challenges in petition due to potential estoppel effects
Critical details about Inter Partes Review
• Available for all enforceable patents
• Must be on §102 or §103 grounds
• Not available more than one year after served with a complaint
• A company can unknowingly purchase a bar to filing an IPR with the acquisition of another company.
Critical details about Covered Business Methods Review• Broader Coverage Than What You Might Think
– Includes method and apparatus claims– Includes AIA and Pre-AIA patents– May include data processing inventions outside of the
financial services field
• Available if you have been sued or charged with infringement
• Only one CBM claim required to make entire patent subject to review
• Stay of a federal lawsuit is all but guaranteed with an automatic appeal to CAFC
Speeding It Up atthe USPTO
July 23, 2013
Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP