The following article is brought to you by our colleagues at the law firm of Hahn Loeser & Parks.
Companies accused of patent infringement now have a more cost effective method to contest the validity of asserted patents as compared to traditional litigation. The America Invents Act introduced Inter Partes Review (IPR)–a new procedure at the United States Patent Office designed to streamline challenges to issued patents. Under the IPR process, a challenger files a petition setting forth the reasons that the patent should be declared invalid and the patent owner is given the opportunity to respond. Within strict deadlines set by statute, a decision on the validity of the patent is made by a panel of three specialized judges.
Even prior to being accused of infringement, the IPR process provides a mechanism for invalidating patents to clear the way for new products. If a competitor’s patent stands in the way of a new product launch, an IPR may be filed to attempt to cancel the competitor’s patent and clear the way for the new product. A patent may be challenged using the IPR process well before any allegation of infringement is ever made, thereby mitigating the risk of infringement potentially much earlier in a product development process. This is in stark contrast to a district court proceeding, which could not be brought until the infringement allegation was an imminent threat. While the IPR process can be costly and is not appropriate in every circumstance, under the right circumstances an IPR may clear problematic patents from the road and open the door to new markets.
Their patent attorneys have extensive experience in these areas and have already filed multiple petitions for Inter Partes Review with the U.S. Patent Office. For more information regarding the IPR or any other intellectual property issues, please contact one of the IP partners at 216-621-0150.
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