Process for invalidating a patent

review proceeding will end, and consequently, how long the stay will have to last.

review under the American Invents Act, the patent review practice in the U. Now a petitioner can challenge the validity of another’s patent using an interactive, quasi-litigation procedure before the USPTO, a forum well versed in handling patent invalidity issues.

Previously, a third-party challenger attempting to invalidate another’s patent before the U. Patent and Trademark Office (USPTO) had two options: reexamination, a similar procedure that provided the challenger with more, yet still limited, involvement.

However, for the petitioner to be successful in this endeavor, a district court judge must first be convinced to stay the pending litigation.

Certain district court judges have been reluctant to stay litigation for concurrent reexamination proceedings, particularly in jurisdictions with a fast-paced docket, due to the concern that reexamination takes too long.

Le Clair Ryan’s Intellectual Property and Technology team has prepared and filed numerous reexamination practice, and patent litigation provides us with the ideal background to handle these new proceedings.

Our team of practitioners regularly handles challenges to patents that involve a variety of technologies, including pharmaceutical compositions, medical devices, chemical compounds, optical fibers, biomagnetic separation technologies, spinal implants, and woven materials.review may make it the preferred choice for any high-stakes invalidity challenge.First, the process is significantly cheaper than patent litigation, in which the average case has been estimated to range from million to million in total costs.Second, the forum of the USPTO offers a stronger level of expertise in analyzing patents and validity challenges, as the new board set up to hear these cases, the Patent Trial and Appeal Board (PTAB), is comprised of seasoned administrative patent judges, who are the same members that handle interferences and reexamination appeals.Third, it is faster than both the previous reexamination procedures, with rules set up so that the entire process concludes within 12 months (extendible to 18 months in extraordinary circumstances) from the date that the PTAB makes its initial ruling.Even if unsuccessful, many of the validity issues can be resolved during review does not, however, have to be used solely in the context of litigation.