Inter partes review (IPR) and covered business method patent review (CBM) proceedings have been available for 9 weeks—since Sept. 16. During the first two months of these proceedings, 51 IPR petitions and 14 CBM petitions have been filed, with only six being found non-compliant or incomplete. But the pace of filing during the second month has slowed significantly since the proceedings were introduced, as shown in the graph below.
Important considerations for in-house counsel
There are several aspects of a contested proceeding that in-house counsel should pay close attention to when managing a case.
Early identification of issues is crucial. The timelines in contested proceedings are short and some issues require long lead times. For example, any attempt to antedate or “swear behind” a cited reference often requires a concerted effort to locate and review both conception and diligence evidence. Also, retaining appropriate subject matter experts who can effectively stand for deposition may be time-consuming. Finally, locating inventors (if necessary) and amassing secondary consideration evidence (if available) to rebut obviousness may also be long-lead-time items.