Positioning Your Company to Win
boss is on the line. She tells you that
your company has been served with a
complaint of patent infringement. She's
concerned about a possible lengthy trial
and the accompanying large expenses.
Your boss asks for strategies for dealing
with the issue. What do you say?
Did your answer include using patent
post-grant proceedings at the United
States Patent and Trademark Office
(USPTO)? More and more companies are
choosing to use post-grant proceedings,
especially Inter Partes Review, as
a weapon in their arsenal against
patent infringement claims. A general
understanding of these proceedings is a
necessary component of doing business
in our technology-driven economy,
whether you are defending against an
infringement complaint or enforcing your
ever-more valuable patent assets.
Proceedings
the America Invents Act, implemented
new patent litigation alternatives,
including Post Grant Review ("PGR"),
Covered Business Method Patents
Review ("CBMP"), and Inter Partes
Review ("IPR"). These proceedings are
adjudicated by panels composed of three
administrative judges. The judges are
selected from a pool of several hundred
members of the USPTO Patent Trial
and Appeal Board ("the Board"). The
proceedings have some similarities to
aspects of litigation, including trial-like
elements such as discovery, depositions
and a final oral hearing. However,
discovery is extremely limited, live
witnesses at the oral hearing are rare,
and motions for extensions of time,
additional discovery, or additional
briefing to the Board are unlikely to be
granted. If a proceeding is instituted,
conclusion typically one year, but no
longer than 18 months.
IPR was created, in part, to reduce
the number of court-filed patent cases
and to speed up the finality of patent
validity decisions. The rules governing
IPR reflect those goals by creating
restrictions for parties involved in
litigation of the patent.
to filing a petition for IPR if you are
either (a) sued for infringement or (b)
if you instigate litigation to invalidate
the patent at issue in civil court. The
time restriction may also apply to
you depending on your company's
relationship with a party who has been
sued for infringement or who has tried
to invalidate the patent in civil court.
include co-defendants, subsidiaries/
parents, suppliers/customers and
funders/petitioners.
post-grant proceedings, patent drafting, patent prosecution,
patentability analyses, infringement analyses, prior art
searching and technology licensing.
and prosecuting patent applications, patentability analyses,
prior art searching, invalidity opinions, freedom-to-operate
opinions, post-grant proceedings and technology licensing.
The Film Row District
609 W. Sheridan Avenue
Oklahoma City, Oklahoma 73102
405.607.8686 Fax
lcraft@dunlapcodding.com
dunlapcodding.com