The Patent Trial and Appeal Board (PTAB) has denied institution in just over 25% of the inter partes review petitions it has ruled on. A denial may be considered a "win" for the patent owner, whose claims do not then have to undergo a proceeding where, historically, the chances of survival are not very good. Further, for now, the patentability standards applied before PTAB seem less favorable to patent owners than before the U.S. district courts. When faced with an IPR petition, patent owners may choose to first try to prevent institution, particularly since decisions on institution are not appealable. In this article, Finnegan attorney Thomas L. Irving explores substantive arguments patent owners may make to obtain denial, as well as strategies for patent owners to employ when drafting and prosecuting applications to enhance possibilities that patent claims will withstand an IPR challenge.
Previously published by IPO Law Journal
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
