Trends from 2 Years of AIA Post-Grant Proceedings

September 29, 2014 Published Work
Law360, New York

It has now been two years since the America Invents Act created new procedures for third parties to challenge the validity of issued patents in a contested validity trial in the U.S. Patent and Trademark Office before its Patent Trial and Appeal Board. Specifically, on Sept. 15, 2012, the AIA replaced inter partes re-examinations with a set of new proceedings — inter partes review, covered business method patent review and post-grant review. The second year conclusively demonstrated that these post-grant validity trial procedures have radically changed the patent litigation landscape. Such challenges have become ubiquitous and quite successful.

Part 1 of this article will review the statistics regarding IPRs, now that we have two years of data. It will also discuss some of the developments, a number of them unexpected, such as the volume of filings and the use of IPRs in the biotech/pharma space. In Part 2, we will review tips and strategies for success during IPRs, as well as describe the downside risks to filing an IPR petition.