Speeding Up Invalidity

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Speeding Up Invalidity

  1. 1. Speeding It Up at the USPTO July 2013 July 23, 2013
  2. 2. Speeding Up Invalidity
  3. 3. Patent Office Invalidity Proceedings • Post-Grant Review (PGR) • Inter Partes Review (IPR) • Covered Business Method Review (CBM) • (Derivation Proceedings– not going to discuss)
  4. 4. Patent Office Invalidity Proceedings PGR IPR ≤ 9 Months From Issue >9 Months OR After PGR
  5. 5. GAP! Patent Office Invalidity Proceedings PGR IPR ≤ 9 Months From Issue >9 Months OR After PGR IPR Technical Amendment to AIA Fixed
  6. 6. 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.
  7. 7. 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
  8. 8. 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!
  9. 9. The Default Timeline for IPR, PGR, and CBM Date 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.
  10. 10. The Default Timeline for IPR, PGR, and CBM Date 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.
  11. 11. 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
  12. 12. What About the Disadvantages? • Availability – PGR/IPR/CBM- not available if you file a complaint declaratory judgment before filing petition (excludes counterclaims)
  13. 13. How to Use • Litigation – Quickly knock out invalid patents • Snow Plow – Clear the way for new products
  14. 14. 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
  15. 15. 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.
  16. 16. 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
  17. 17. Speeding It Up at the USPTO July 23, 2013 Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP

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