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.
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>>