How Patent Challenges are Being Rewritten

  Patent validity challenges at the USPTO have not slowed, but they have shifted forums. Discretionary denials of institution and the requirement that patent challengers advance consistent claim construction positions before the Patent Trial and Appeal Board and the district courts, have made inter partes review (IPR) a less favorable tool for challengers. In response, challengers have moved rapidly to ex parte re-examination (EPR). The Office has responded by giving patent owners a pre-order response in EPR and paying closer attention to repeat challenges under 35 USC section 325(d). The result is a post-grant system with different threshold standards, and very different bargains after institution. Practitioners choosing to initially proceed with an IPR challenge should draft the IPR petition with an EPR request already in view.

See full article at IAM The Patent Prosecution Review Americas, 2027