IP: We settled! Or did we…

In spite of this optimism, the AIA states that a joint motion to terminate only may end the proceeding

When the America Invents Act (AIA) was enacted, many commentators praised a provision of the AIA that allows parties to settle a post-grant review, typically an inter partes review (IPR) or a covered business method review (CBM), by moving to terminate the proceeding. As an IPR often proceeds alongside district court litigation, this provision was expected to encourage parties to negotiate to settle both the litigation and the administrative proceeding.

The prior inter partes reexamination framework did not allow for voluntary termination. Once a reexamination proceeding was instituted, the U.S. Patent and Trademark Office would proceed without the petitioner, even if it filed no additional papers. This process deprived patent owners of the opportunity to eliminate the risk of an invalidity finding by settling. IPRs were partially designed to encourage settlement by giving the parties the opportunity to negotiate a meaningful compromise.

Contributing Author

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John L. Strand

John Strand focuses his practice on the enforcement and defense of intellectual property rights in patents, trademarks, and domain names. He has assisted clients in...

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