Challenging the Validity of a Patent in a the Post-AIA Era

Patent applicants who discover a third-party issued patent or patent application that is several years old and similar to their own invention are often faced with a difficult dilemma:  should they proceed and face the possibility of an infringement action, request a non-infringement opinion from their patent attorney, or offer to acquire the patent holdings?

Over the past two years, many small inventors have decided to forgo a fourth option: challenging the validity of the reference through inter partes review (IPR).  For many inventors and small businesses, the new court proceeding represents uncharted  territory and, aside from attorney’s fees relating to filing, prosecuting, and potentially carrying out oral hearings on the matter, government fees can approach $25,000.

However, a statistical survey to be published in the University of Chicago Law Review authored by Prof. Brian Love et al. offers a first objective glimpse at IPR issuance rates, invalidation rates, and other related figures.

The findings of the paper may lend motivation to many such inventors to pursue inter partes review.   Most strikingly, among IPRs that reach a final decision on the merits, 77 percent of cases witness the invalidation of all instituted claims.   With the concomitant high rate of IPR grant (petitions for IPRs are granted for at least one challenged claim 84 percent of the time), the percentage of patent applicants and owners who may take advantage of this new proceeding is likely to increase dramatically.