New Options for Challenging Patents Before the USPTO Under the America Invents Act
- Deborah Sterling, Ph.D. and Eldora L. Ellison, Ph.D.
- Sterne, Kessler, Goldstein & Fox P.L.L.C.
The table attached provides a brief summary of the new options for challenging patents that will become available after final enactment of the America Invents Act. Of course, District Court litigation and ITC proceedings will still be available and are not included in this summary. For each of the proceedings outlined below, there is no presumption of validity as to the patent, the standard of proof is preponderance of the evidence, and the claims will be given their broadest reasonable construction in light of the specification. However, the proceedings differ, for example, with respect to timing and the extent to which the challenger is involved in the proceeding. Nonetheless, each option can serve as a valuable tool when considering the enforcement, licensing, valuation, transfer, or sale of a U.S. patent. Choosing the best option requires careful consideration.
Our knowledge of patent litigation in the courts and at the U.S. International Trade Commission and our extensive experience in patent prosecution, interferences, reexaminations, reissues and appeals at the USPTO afford us a clear and comprehensive view of the strengths and weaknesses of each of these options from a practical perspective.