IP: Options for contesting patentability at the USPTO

To challenge or not to challenge, that is the question

It has been roughly two months since the new inter partes review (IPR) and covered business method patent review (CBM) proceedings became available at the U.S. Patent and Trademark Office (USPTO), and some long-awaited questions are beginning to be answered. Leading up to enactment of the America Invents Act, stakeholders questioned whether anyone would actually make use of the new avenues for challenging patents. The answer is “yes.” To date, 43 IPR petitions and 13 CBM petitions have been filed. While CBM petitions can be filed only for patents involving financial products or services (excluding “technological inventions”), petitions for IPR can be—and have been—filed in all technology sectors.

Several features of the new proceedings make them an attractive alternative, or supplement, to challenging patents in district court. First, the short time-frame until resolution of the proceedings at the USPTO. The new proceedings typically will be resolved within about 18 months from the filing of the petition. Additionally, the lack of a presumption of validity and the lower preponderance-of-the-evidence standard at the USPTO, rather than the district court's clear-and-convincing-evidence standard, help level the playing field for the challenger. And, since the review proceedings are adjudicated by technically-trained judges, who are well-versed in patent law, the challenger can readily focus the dispute on the core patentability issues. Given these features of the new review proceedings, potential petitioners may find that IPR and CBM are effective mechanisms for nullifying patents, even if the petitioner has been sued for infringement of the patent.

Contributing Author

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Eldora Ellison

Eldora L. Ellison, Ph.D. (eellison@skgf.com) is a director at Washington, DC-based intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. who holds significant...

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Contributing Author

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Deborah Sterling

Deborah Sterling, Ph.D. (dsterlin@skgf.com) is also a director at Sterne Kessler with significant experience in inter partes proceedings at the USPTO, including patent interferences...

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