Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and publications. To help navigate the uncharted waters of this procedure, each edition of IP Buzz- Post Grant Practice will include an installment of our new IPR Spotlight Series, where we will feature a specific event on the IPR timeline, from filing the petition for IPR through oral hearing and final written decision. We will present an overview of the featured filing or procedure, along with practice tips and strategy informed by recent PTAB decisions, statistics, and practical experience. In our second IPR Spotlight installment, we focus on whether to file a patent owner preliminary response.
Part 2: Evaluating Whether to File a Preliminary Patent Owner Response -
Once a petition for IPR has been filed, the patent owner has three options: (1) file a preliminary response to the petition within three months; (2) file no response and wait to see whether the PTAB will grant the petition and institute a trial; or (3) affirmatively waive filing the preliminary response. In the last year, 62% of patent owners filed preliminary responses, 17% did not file any response, and 21% affirmatively waived filing, showing a marked rise in preliminary responses since 2013. In spite of the 16% increase in patent owner preliminary responses, the percentage of PTAB trials instituted did not decrease commensurably, going down just 3%. These numbers suggest that filing a preliminary response does not necessarily improve your odds of success. Thus, determining whether to file a preliminary response should be a strategic decision, taking into consideration a number of competing factors discussed below.
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