IPR: how to gain a tactical advantage


Jacob Moore and Tianran Yan

IPR: how to gain a tactical advantage

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The preliminary response allows patent owners who have been hit with an inter partes review case to strike back before a decision on whether to institute a trial is made. Jacob Moore and Tianran Yan of Foley & Lardner discuss when you should and shouldn’t file one.

Since the inception of the inter partes review (IPR) in September 2012, more than 4,000 IPR petitions have been filed by patent challengers (petitioners); the US Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) has instituted trials in almost 70% of the cases.

For completed IPR proceedings with a final written decision by the PTAB, 86% ended with at least some claims being invalidated. Perhaps as a result of petitioner success in IPR proceedings, the popularity of using the PTAB as a forum for challenging patent validity is on the rise, with the number of petitions filed increasing year-on-year by more than 30%.

With the increased reliance on the PTAB for assessing patent validity, now more than ever patent owners should consider pre-institution strategies for defending their patent rights in an IPR. With this in mind, this article reviews a valuable tool for thwarting the institution of IPRs: the patent owner’s preliminary response.

Jacob Moore, Tianran Yan, Foley & Lardner, IPR, patent, PTAB, USPTO, petition, validity,