Corporate counsel facing patent infringement cases have three primary goals: minimize exposure, contain costs and achieve greater efficacy. This article describes how corporate counsel can leverage the United States Patent and Trademark Office (PTO) contested proceedings authorized by the America Invents Act (AIA) (post grant review, inter partes review or covered business method review) to accomplish these goals.
The PTO may be the most effective forum to determine validity: The forum may make all the difference between a successful and an unsuccessful challenge to the validity of a patent. Forum selection—PTO versus court—will depend on the complexity of the technology and the type of invalidity challenges available. Because of the factors discussed below, an AIA contested proceeding often will be a more effective forum for complicated technology or validity challenges primarily based on obviousness.