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Post-Grant Invalidity Challenges at the USPTO: Congress Built It, But Will They Come?

  • 11.01.11
  • Lori A. Gordon & Glenn J. Perry
  • Aspatore: Inside the Minds - The Impact of the Leahy-Smith America Invents Act

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (AIA). In addition to moving the United States from a first-to-invent to a first-to-file system, the AIA introduces a new suite of challenges that can be raised against a patent in the US Patent and Trademark Office (USPTO). The USPTO is now working on creating the rules and the structure to implement these challenges on September 16, 2012. A major unknown is whether there will be wide-spread interest in filing post-grant challenges when the gates open. The history of inter partes reexaminations suggests a lengthy and cautious period of adoption by the industry.

This chapter explores the history of post-grant validity challenges, the new post-grant challenges available under the AIA, and strategic considerations that a third party, especially a third-party defendant in a patent infringement action, should take into account when deciding whether to pursue a validity challenge in the USPTO.

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