United States: Estoppel As Applied To And From Patent Office Post-Grant Proceedings

The America Invents Act (AIA)¹ altered the landscape of patent law by, among other things, creating alternative vehicles for challenging the validity of patents before the U.S. Patent and Trademark Office (PTO).² In these post-grant, trial-like proceedings, the PTO has the authority to cancel patent claims that it determines are invalid by a preponderance of the evidence.³

^{1 29, 125 Stat. 284 (2011) (codified in 35 U.S.C.).}

^{2 The AIA post-grant proceedings comprise inter partes review, post-grant review and covered business method review. This article discusses these proceedings generally and highlights distinctions among the different proceedings in the footnotes.}

^{3 See 35 U.S.C. §§ 316(e), 318(b) (2012) (inter partes review); id. §§ 326(e), 328(b) (post-grant review); see also 37 C.F.R. § 42.1(d) (2014); id. § 42.80.}

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Originally published in Bloomberg BNA's Patent, Trademark & Copyright Journal, Vol. 88, No. 1020.

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