Under the America Invents Act (AIA), patent challengers now have three new kinds of post-grant review with which to attack a patent's validity: inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM review). These AIA trials are attractive for numerous reasons, including the speed at which the proceedings are conducted, the technical expertise of the Patent Trial and Appeal Board (PTAB), and the broader claim construction standard used. The PTAB's record of cancelling a majority of challenged claims in AIA trials has garnered it the reputation of being anti-patent and pro-petitioner, creating a flurry of petition filings as patent challengers scramble to take advantage of these proceedings. Many patent owners are wondering what they can do to protect their patents and inventions from these "death squads killing property rights." Here are four steps that patent owners can take to strengthen their patents and bolster their portfolios against the threat of post-grant challenges.
1. Narrow Your Patent Claims -
In an AIA trial, the PTAB uses the "broadest reasonable construction in light of the specification" to define claim terms when determining patentability. Under this standard, patent specifications should be drafted to ensure clarity of claim terms and avoid ambiguities. Claim terms construed in light of a focused specification will be more difficult to challenge. In addition, claims should be drafted or amended to have a focused scope in order to be less susceptible to challenge. And as always, focused patent prosecution may avoid creating a prosecution history that could be used to a patent owner's detriment.
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