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IP Advisor
America (re)Invents Alternatives to Patent Litigation

Following the enactment of the America Invents Act ("AIA"), U.S. patent owners and potential patent challengers have no shortage of options for post-issuance patent review. Because the risks and benefits of the available procedures depend on a party's strategic perspective, it is informative to view the procedures from two perspectives - that of a patent challenger, and that of a patent owner. Challengers now have four distinct administrative routes for invalidating issued patents: inter partes review, post-grant review, ex parte reexamination and derivation. A transitional program for covered business method patents is also available. Patent owners have four options for correcting an issued patent or preemptively addressing prior art before enforcement: ex parte reexamination, supplemental examination, reissue and certification of correction.

Tables A and B, links below, provide a summary of the proceedings available to challengers and patent owners.

Table A - Post-Issuance PTO Proceedings Available to Challengers

Table B - Post-Issuance PTO Proceedings Available to Patent Owners

In this article we provide an overview of post-issuance proceedings new and old, and consider the tradeoffs of each procedure to assist challengers and patent owners in making informed strategic decisions. Read the full article>>

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For more information about the contents of this alert, please contact:

Douglas Kline
+1 617 570 1209

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