A Looming Deadline

On September 16, 2012, all of the new contested proceedings (with the exception of derivation proceedings) will become operational and no new inter partes reexaminations will be allowed. One must plan accordingly for this new world for patent enforcement, licensing and monetization. It will be centered around more of a serial validity system than the current parallel validity one, making the United States patent system more like the German’s. Below are three scenarios and the specific questions that one should ask when facing this situation under the new patent system post-America Invents Act.  

Scenario #1 – Monetization or Licensing of Patent Portfolio: You are a company, university, or individual interested in monetizing your patent portfolio.  

Questions to ask:

  • What is the covered technology?
  • Is there any undisclosed prior art in portfolio?
  • Are there any pending patent applications?
  • When was the patent application fi led?
  • What is the expiration date of patent portfolio?
  • Are there any prior or on-going litigations?
  • Are there any prior or pending reexaminations?  

Scenario #2 – Competitor Litigation: You are a company manufacturing and selling a suite of products and you believe another company is infringing upon your intellectual property.  

Questions to ask:

  • What is the covered technology?
  • When was the patent application filed?
  • Are there prior or on-going litigations?
  • Are there prior or pending reexaminations?
  • Are the infringing products/services being imported from outside USA?
  • What are the most likely defenses?
  • Where will the suit be filed?
  • What is the timeline of District Court or USITC?
  • What is the possibility of transfer of of jurisdiction of law suit?
  • What is the possibility of stay (particularly covered business methods)?
  • What is the possibility of multiple proceedings at Patent Office?

Scenario #3 – Multiple Defendant Litigation: You are a company that holds the patent to a key technology innovation, and you believe a number of companies are infringing upon that patent.  

Questions to ask:

  • What is the covered technology?
  • When was the patent application filed?
  • Are there any pending patent applications?
  • Are there prior or on-going litigations?
  • Are there prior or pending reexaminations?
  • Are the infringing products/services being imported from outside USA?
  • What are the most likely defenses?
  • How many suits will be filed and where will the suit(s) be filed?
  • What is the timeline of District Court or USITC?
  • What is the possibility of transfer of jurisdiction of law suit(s)?
  • What is the possibility of stay (particularly covered business methods)?
  • Will one stay stop the whole enforcement effort?
  • What is the possibility of multiple proceedings at Patent Office?
  • What are the available types of proceedings at the Patent Office?
  • Is there the possibility of merger, stay or consolidation of different proceedings at the Patent Office?  

After taking into consideration each set of questions above, the patent owner needs to determine the company’s best practices and work with legal counsel to develop the optimal strategy and specific tactics that will drive success.