Patent Law Practice Center

How Long Will Inter Partes Review Really Take?

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Practical Pendency of IPR to be 18-24 Months

In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.

IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.

Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX. (more…)

What’s Wrong with Reexamination and How to Make it Better

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why reexamination should absolutely be considered when there is a strong case of invalidity that is built upon prior patents or publications and what the Patent Office is doing now with respect to reexamination.

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.

Click here to read the full IPWatchdog publication.