For any business worried about infringing another’s patent, life has gotten better … and more complicated. Thanks to the America Invents Act (AIA), businesses have a new and improved set of options for challenging the validity of issued patents.
“There are four different ways to challenge a patent [before the U.S. Patent and Trademark Office (PTO)], and they all have distinct advantages and disadvantages,” says Marc Kaufman, a partner at Reed Smith. He adds that any business wishing to challenge a patent needs to consider many factors and then make a
Post-grant review is similar to inter partes review but enables a much broader range of challenges. “You can raise any grounds of invalidity, including inadequate description, patent ineligible subject matter and anticipation evidenced by any type of prior art,” says Matthew Kreeger, a partner at Morrison & Foerster. “You can raise all sorts of arguments that you couldn’t raise before except in litigation.”