September 01, 2014

Considerations for Using Post-Grant Proceedings to Attack Patent Validity

©2014. Published in Landslide, Vol. 7, No. 1, September/October 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The America Invents Act (AIA), which took effect on September 16, 2012, implemented significant changes in post-grant proceedings in the U.S. Patent and Trademark Office (USPTO). Nearly two years later, new administrative trial proceedings instituted under the AIA have proven to be powerful tools to attack the validity of patents. Since the first decision issued in November 2013,1 nearly all examined patent claims have been canceled. One appellate judge recently called the Patent Trial and Appeal Board (PTAB) panels “death squads killing property rights.”2 These newly available trial proceedings, if properly used, could provide a path to reduce the time and expense associated with patent litigation. This article focuses on the increasing popularity of inter partes review and covered business method reviews, and the unique considerations presented when attacking patent validity.

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