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 |