Challenging Patents

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Any company or individual that works with technology may have to deal with patents. Even companies that do not patent their own products or services may nevertheless be impacted by patent law. While certain high-profile patent cases (Apple-Samsung) have featured large patent-holders on both sides, patent lawsuits may also be brought against small companies (start-up) that do not have any patents in their arsenal.

Now that many provisions of the America Invents Act (AIA) are being implemented, however, a greater variety of challenges to patents and patent applications has become available. The availability of such proceedings reflect the understanding that individuals and entities working in innovation industries may have knowledge and access to materials useful to the Patent Office in assessing patentability of pending patent applications, as well as ensuring that issued patents do indeed meet the standards for patentability (e.g., novelty, nonobviousness).

Such proceedings may provide speedier and less costly alternatives to litigation in federal district courts, as well as possibly staying litigation in some cases. As such, a company or individual that faces current or potential litigation by a competitor or a non-practicing entity (also called “patent assertion entity” or “patent troll”) with questionable patents now have more options to prepare for and to address such concerns.

Ex Parte Reexamination: Available since the 1980’s, ex parte reexamination of a patent can be initiated by any member of the public that submits prior art and a statement describing how the prior art raises a substantive new question of patentability. Through such a proceeding, patent claims may possibly be cancelled or narrowed.

Inter Partes Review: Newly available under the AIA, inter partes review is a trial proceeding before the new Patent Trial and Appeal Board (PTAB). Only in effect as of September 16, 2012, the goal is for the PTAB to handle a proceeding and reach a final determination within 1 year. Like ex parte reexaminations, a party may challenge the patent of another on the basis of prior art.

Post Grant Review: Post grant review is another trial proceeding that is newly available under the AIA. This proceeding allows for patent challenges on additional bases besides prior art, such as the issue of whether the patentee was actually the first-inventor-to-file. Post grant review is only available during the first nine months following issue of a patent. Like the inter partes review, the PTAB expects to resolve a post grant review proceeding within 1 year.

Derivation: Another new trial proceeding before the PTAB, a derivation proceeding determines whether an inventor of an earlier application derived the invention from another, later-filing inventor and was not authorized to file the earlier application. A petition to initiate such proceedings may only be filed within 1 year of publication of the earlier filed application.

Transitional Program for Business Methods: Yet another new proceeding conducted by the PTAB, the transitional proceedings for business methods are similar to post grant review. The petitioner (or its real party in interest) must have been sued or charged with infringement of a business method.

Third Party Submission: Third parties may participate in the review of pending patent applications by submitting prior art to patent examiners. The goal is to allow individuals and communities with deep, cutting-edge knowledge of technology to participate in examination and aid the Patent Office in determining whether an invention is actually novel. Third party submissions may be done anonymously, but  must be filed before allowance.

Patent News:

1. Ask Patents is a new crowd-sourcing collaboration between the U.S. Patent and Trademark Office, Stack Exchange, and Google Patents to allows citizen volunteers to participate in identifying questionable patents and patent applications, tagging and classifying the same, finding and reporting prior art, and reporting results to the USPTO.

2. The ACLU asks the U.S. Supreme Court to invalidate patents on breast cancer gene. Background: The ACLU, in conjunction with various nonprofit organizations, had successfully brought suit to invalidate certain claims in breast cancer gene patents held by Myriad Genetics and the University of Utah Research Foundation. On a first appeal to the Federal Circuit some patent claims were found valid and other patent claims remained invalid. Before the parties’ petition to the Supreme Court could be decided, the Supreme Court issued their decision in Mayo v. Prometheus, a case with potentially significant consequences for technologies related to life sciences. The Supreme Court thereafter remanded this case back to the Federal Circuit for reconsideration in light of the Mayo decision, following which the same panel of Federal Circuit judges affirmed its earlier decision.

3. The USPTO is testing an outreach effort at Cornell University looking to give students access to resources and advice in bringing innovations to market.

Published In: Administrative Agency Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Lewis Roca Rothgerber | Attorney Advertising

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