There’s a far less expensive and expedient way to challenge a patent than going to court. Thanks to provisions contained in the America Invents Act (AIA), parties contesting the validity of a patent can choose from a variety of patent review proceedings before the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO).
Depending on the type of patent involved and when it was issued, parties can ask the PTAB to declare the challenged patent invalid by conducting one of the following types of reviews: Post Grant, Inter Partes or Covered Business Method. Under these procedures, there is no lengthy discovery or numerous court appearances. Instead these review procedures are designed to allow proceedings to conclude quickly. Not only is this a less expensive route, but the process gives challengers a number of advantages. For example, these procedures lower the burden of proof for invalidating a patent. This means that it is easier to invalidate a patent in these proceedings than in the courtroom.
After the PTAB issues a finding, there is no intermediate administrative appeal or review and the matters can be appealed directly to the U.S. Court of Appeals for the Federal Circuit.
More than 4,475 petitions seeking PTAB review have been filed since the AIA provisions became effective in September 2012. By far the greatest number of petitions – 90 percent – seek Inter Partes Review. While the post grant review proceedings provide many benefits to challengers, the rules governing the procedures and the tighter deadlines create new pitfalls for users. Because of that, it is important to be represented by counsel experienced in the courtroom and at the USPTO.
Representing patent owners, Armstrong Teasdale works to ensure that the challenged patents emerge from post grant proceedings with patent protection that is commercially valuable. For those challenging patents, Armstrong Teasdale’s post grant team conducts the due diligence and legal analysis necessary to maximize the likelihood of a successful challenge. To accomplish these goals, a select group of patent litigators and patent prosecutors work cases together to efficiently analyze patent defense or invalidity strategies. The blending of this experience, along with the unique technological background of each attorney, has proven effective in these quasi-litigation post grant proceedings.
As the number of post grant challenges continues to rise, the need for this type of specialized representation before the PTAB will also increase. Our unique post grant team is able to better serve our clients through further collaboration, and will keep our clients fully informed of any risks (or benefits) as they navigate the shifting landscape of post grant proceedings.