How do you deal with a patent that may cover a product or service that you plan to make, use, sell, or import? What happens if one of your competitors controls that patent? Or if you receive a letter threatening a patent infringement lawsuit? Or if you get sued? If you have reason to believe that the patent is invalid and never should have been issued (based on your knowledge of the industry or the results of a prior art search), you may be able to challenge the patent’s validity using a United States Patent and Trademark Office (USPTO) process that is much cheaper than litigation. If the USPTO finds the patent to be invalid, then the threat of a patent infringement lawsuit may diminish or even disappear altogether.
Starting in 2012, the USPTO began offering three new proceedings for challenging the validity of already issued U.S. patents: inter partes review, post grant review, and covered business method patent review. In each of these “post-grant” proceedings, a board of administrative patent judges determines whether or not the claims of the patent are valid based on prior art, evidence, and arguments presented by both the patent owner and the challenger. The patent owner and the challenger can even conduct limited discovery and argue before the board of administrative patent judges. What’s more, the board will issue its decision 18-24 months after a petition is filed — which is significantly faster than previous processes at the USPTO. In addition to the faster time table, post-grant proceedings are typically much less costly than litigation in the federal courts because the USPTO processes focus exclusively on patent validity instead of on patent validity and patent infringement.
Post-grant proceedings are still relatively new, but statistics suggest that they are effective at weeding out bad patents. According to Cooley’s PTAB Digest database, which contains information about every inter partes review ever filed, the USPTO has invalidated some or all challenged patent claims in 86% of cases. Cooley’s PTAB Digest database also includes more granular statistics on each proceeding, information on the interplay between patent litigation and inter partes review, and information about key decisions from the USPTO. To access Cooley’s PTAB Digest, register for a free account at www.ptabdigest.com.