Among its many changes, the America Invents Act (AIA) provides several new post-grant procedures for a third party to challenge the validity of an issued U.S. patent. These procedures are intended to provide a more cost-effective and speedier forum than civil litigation, and also provide a potentially lower threshold for invalidating a patent claim. Though it is unclear how extensively these proceedings will be used, it is conceivable that third parties will find them to be decidedly pro-challenger, and thus a preferred forum to that of the federal courts. To this end, such proceedings could, and likely will, have a direct effect on patent valuation and how firms conduct due diligence.
Under the AIA, the four patent review procedures that a third party may use to challenge the validity of a patent claim include:
- Ex Parte Reexamination
- Post-Grant Review (PGR)
- Inter Partes Review (IPR)
- Covered Business Methods (CBM)
While the first was in existence prior to the AIA enactment, the latter three are entirely new. They are the focus of this article.
These three proceedings provide unique quasi-litigation forums for evaluating patent validity. There are certainly nuances that distinguish each of these proceedings, such as when they may be brought and what grounds may be argued. Nevertheless, there are also a few aspects that are common to these proceedings and that render them pro-challenger:
1. Lower standard for establishing claim invalidity
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.
For questions call 1-877-256-2472 or contact us at [email protected]
