How patent litigation and appeals work

On Behalf of | Mar 2, 2022 | Industry Patents And Infringement, Intellectual Property Litigation, Patents |

Patents are essential, but they are most potent when the holder is willing to protect them. This may include high-stakes jury trials, bench trials and perhaps a subsequent appeal to the Circuit Court. The results can involve permanent injunctions, financial damages, or payment of the winner’s attorney fees. If the two sides successfully negotiate, it could consist of a settlement before litigation or a preliminary injunction.

Regardless of the circumstances, an intellectual property attorney can help clients, whether the patentee or the alleged infringer, address these matters.

The trial process

The Patent Trial and Appeal Board (PTAB), a tribunal within the U.S. Patent and Trademark Office, conducts the trial if the two sides litigate. The trial proceedings can involve:

  • Inter partes review (IPR): This is a pretrial review proceeding to determine the patent’s validity and the viability of the petitions.
  • Post-grant review (PGR): This begins with a third party filing a petition within nine months of the reissue or grant of a patent. The patent holder may file a preliminary response. The case moves forward if at least one claim challenging the patent has a better than 50-50 chance of succeeding.
  • Covered business method (CBM): Formerly known as the transitional program for covered business method patents, this reviews the patentability of a covered business method patent. It is similar to the post-grant review.
  • Derivation proceeding (DP): This trial proceeding determines if the inventor named in an earlier patent application created the claimed invention or filed the earlier application without authorization from the inventor. This must occur within one year of the patent’s issuance for a substantially similar creation.

Appealing a decision

Originally called the Board of Patent Appeal until the America Invents Act changed things in 2011, the PTAB can also hear appeals involving patent examiners’ adverse patentability decisions regarding original applications, reexaminations and reissues. Adverse PTAB decisions may be appealed to the U.S. Court of Appeals for the Federal Circuit. The process includes:

  • Notice of appeal and fee: Any applicant whose claims were twice rejected may appeal their decision. They must file the appeal within two months of the notice and pay the fee.
  • Appeal brief: This preserves the appellant’s right to appeal. Failure to do so means the appeal will be automatically dismissed.
  • Examiner’s answer: This contains new grounds for rejection, either undesignated or designated.
  • Appeal brief forwarding fee: The petitioner must file this within two months of the examiner’s answer or decision to refuse a petition.
  • Oral hearing: An oral hearing before the PTAB enables each side to explain their position. Potentially held in a courtroom with a court reporter, the hearing enables the board to ask questions of the parties in order to inform their decision.
  • Decision by the board: The board either affirms, partially affirms or reverses the examiner’s decision.
  • Completion of appeal process: There may be a request for a rehearing if it is believed that the board misapprehended points made during the oral hearing.

These processes are complex

This is a general overview of a complex administrative process. It is nearly impossible to go through this entire process without the help of a patent attorney with experience handling litigation and appeals. Often, clients best help themselves by hiring someone early in the process.

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