May 2013

The America Invents Act (AIA) requires that petitioners in both inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trials and Appeals Board (PTAB) identify the real parties in interest.  The AIA includes a so-called “estoppel” provision.  The estoppel provision precludes not only the petitioner but any real party-in- interest (RPI) as well as any party who is in privity with the petitioner from challenging the validity of a patent claim which has been subject to a final decision of the PTAB, in a future proceeding at the US Patent and Trademark Office (USPTO), in courts or before the International Trade Commission based on any ground that the “petitioner raised or could have raised during that inter partes review.”
Continue Reading Who Is A Real Party In Interest?

By many estimates, somewhere between five and ten percent of patents that are issued each year by the U.S. Patent and Trademark Office (USPTO) never should have been granted.  The USPTO’s own statistics bear this out.  Each year a small sample of patent applications allowed by examiners in line for promotion are given a second review to assess the examiners’ skills – and each year about five percent of their work product is flagged for failing to cite and apply the closest prior art.  This data may indeed underestimate the number of bad patents since the sampled work product comes from examiners who knew that they are being considered for promotion and, hence, had every incentive to do an especially thorough job.

The general consensus until recently has been that the U.S. patent laws lacked effective mechanisms for opposing dubious patent claims once granted.  More specifically, many industrial groups have criticized the options available to challenge a granted patent administratively, without the need for multi-million dollar federal court litigation.

However, recent changes in federal law, new commitments from the U.S. Patent and Trademark Office, and a growing amount of statistical data suggest that a viable American system of post grant proceedings is emerging. Under this system, an administrative challenge to a questionable patent may be an effective defense strategy – even after federal court litigation has commenced against the would-be challenger.
Continue Reading Use of Post Grant Proceedings to Challenge Bad Patents

The America Invents Act (AIA) creates several new administrative procedures to challenge or revise U.S. patents after they have issued.  The AIA also makes significant changes to some of the existing mechanisms for challenging or correcting issued patents.  The new (and old) procedures are summarized below:
Continue Reading Post-Grant Proceedings Under the America Invents Act

Welcome to Pepper Hamilton LLP’s  blog. is published by members of Pepper’s patent review team.  With regular posts from our team’s lawyers who have varied legal backgrounds and guest bloggers, we will explore legal issues involving patent prosecution and litigation across many industries.  The team members concentrate their practices on challenging and defending