The America Invents Act ("AIA") created several new administrative procedures
for members of the public seeking to challenge issued patents. These include
Inter Partes Review (“IPR”), Post Grant Review (“PGR”), and the transitional
program for Covered Business Method Patents (“CBM”). IPR and CBM proceedings first became available in September 2012.
One unknown at the outset of these programs was whether they
would prove attractive to parties who previously may have sought reexamination
or challenged a patent in court. Although an administrative challenge in the
Patent Office may be less costly and time consuming that federal court
litigation, a party pursuing administrative review will be estopped from raising
additional invalidity issues in subsequent proceedings. In addition, the USPTO’s
experience with inter partes reexamination proceedings in the early 2000’s
indicated that practitioners and clients initially tend to be cautious about
new proceedings.
Data released this week by the USPTO’s Patent Trial and
Appeal Board ("PTAB") shows a remarkable jump in the number of IPR filings. In the first
full year of operation (fiscal year 2013), 514 IPR proceedings were filed with
the PTAB. In just the first four months of fiscal year 2014, by contrast, 305 IPRs
have been filed. If IPRs are filed at the same rate for the remainder of FY2014,
total filings may exceed 900 cases.
In addition, the PTAB data shows that a disproportionate
share of IPR proceedings are in the computer and electrical field, representing
over 70 percent of IPR and CBM proceedings filed. Mechanical patents made up
another 16 percent of filings.
Based on this data, one has to wonder whether AIA administrative challenges before the PTAB will soon displace federal court litigation (such as the declaratory judgment actions Stefano describes below) as the weapon of choice for taking down a patent, at least in some arts. The full PTAB data, as of January 23, 2014, is posted HERE.
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