Publications

A little over one year ago, the America Invents Act implemented new methods for third parties to challenge the validity of issued patents by having a contested validity trial in the U.S. Patent and Trademark Office. Specifically, the AIA replaced inter partes re-examinations with inter partes reviews (IPR) and added a new proceeding called the post-grant review (PGR). Another new tool is the covered business method review (CBM), which provides a separate means to address the validity of business method patents.

With the implementation of these new post-grant validity trial proceedings, the U.S. patent litigation system has evolved more toward the system used in Europe and elsewhere, where infringement is decided by courts, but issues of validity may be decided by the responsible patent office. Each of the new U.S. post-grant challenge procedures is a hybrid proceeding that introduces litigation tools, such as discovery, motion practice and hearings, to USPTO validity proceedings. This hybrid approach makes IPR, PGR and CBM a more attractive and potentially more effective option to challenging validity than prior re-examination proceedings before the USPTO.

To date, IPR has proven to be very popular. As of Sept. 30, 2013, there have been 523 IPR petitions to the Patent Trial and Appeal Board. The filing rate for the last few months is about 60 IPR petitions per month. Based on the current trend, this number is expected to more than double in the upcoming year, as many would-be petitioners adopt the advantages of an IPR strategy over litigating invalidity in the court.

Most of the early filed cases are now well into the trial phase, and many have been settled or resolved. CBM, albeit more narrowly focused to business method patents, has seen about 57 petitions thus far, a number that is expected to increase. PGR has only a single petition that has been filed, to date primarily because it only applies to newly issued patents that were filed after March 16, 2013.