A New Review Process Shows the Importance of a Good Application

The newly available procedure for challenging patent validity known as inter partes review, or IPR, is forcing patent players to raise their game—from application through litigation.

More than 800 petitions for IPR— many more than the Patent Office itself had expected—have been filed since the process became available in September 2012, according to the USPTO. And while the Patent Trial and Appeals Board issued only one final decision in the first year of IPR, there’s much to be learned from its many rulings on motions so far, says Morrison & Foerster patent attorney Peter Yim.

Patent applicants should take notice of the strict limitations that the PTAB has placed on patent owners’ abilities to modify their claims in response to arguments by patent challengers, says Yim. That’s in sharp contrast to the practice in inter partes reexamination (the procedure supplanted by inter partes review), in which patent owners had wide berth to strengthen their patent claims through amendments. “The quality of the patent is really shining through in the results you get in these proceedings,” says Yim. “It’s important to get it right in the application.”

Created by the federal patent reform legislation of 2011, IPR has added a new layer of strategy to patent litigation, says Morrison & Foerster patent litigator Richard Hung. Most IPR petitions are apparently related to litigation—a defendant accused of patent infringement files an IPR petition challenging the patent’s validity— rather than as an attack on a patent by a competitor, he says.

Under the law, a defendant that is sued in federal district court for infringement has one year to file an IPR petition. In view of the complexity of preparing this petition, Hung notes that “one shouldn’t wait until the last minute to decide whether to file one. The process would ideally begin several months out.”

Once it is started, the IPR process moves rapidly because the PTAB must decide within a year. In contrast to inter partes reexamination, which was run by a patent office examiner, IPR is presided over by judges, many of them former patent litigators. Yim says a decision to keep a dispute in district court or file for IPR should hinge on the argument for invalidity. Highly technical arguments are probably best suited for a PTAB judge rather than a jury.

It’s already apparent that IPR, as a kind of hybrid between patent office exams and federal court litigation, requires expertise across the patent spectrum, Hung says. “You really need to have all the members of your team, from both the patent prosecution and litigation sides, working in close collaboration.”