U.S. Update: Levelling the Playing Field on Challenging Patents?

In the US, the introduction of the inter-partes review (IPR) – permitting a third party to challenge the validity of a granted US patent before the USPTO – has been welcomed. It provides a mechanism for challenging patents in a less costly and potentially more rapid forum than through the US courts. However, it adds another possibility, together with ITC proceedings (and post-grant review) to the landscape of US patent litigation and for adding complexity and potential cost in the US.

In their update on how increasingly the USPTO is denying “institution” of such proceedings (i.e., refusing to permit such proceedings to progress), Courtney Bolin and Tim McAnulty describe the key factors, identified in the recent decision in Apple v Fintiv, for denying institution of an IPR where there are parallel proceedings. These include the efficient use of judicial resources – a factor which is of wider interest, in other jurisdictions, and the discussion illustrates situations that may be relevant to the use of judicial resources. They also note some tactical considerations where such a challenge is being contemplated or proceedings under a US patent have been threatened. And as an interesting additional snippet are some figures on time to trial in different US jurisdictions, showing that not only can a party spend a considerable amount of money in such proceedings, but can do so on a relatively short timetable.

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