Alert November 28, 2012

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>>