Three Ways to Challenge a Patent: Pros and Cons

An inter partes review (IPR) is a new mechanism for challenging patent validity through an evidentiary proceeding before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. Under the right circumstances, it is a viable option for a party challenging an issued patent. Others include traditional ex parte reexamination and district court litigation.

A third party requesting ex parte patent reexamination will have no real discovery opportunities, whereas litigation can go to the other extreme. Nor are motions apart of ex parte reexamination. After it files, a third party is out of the proceedings.

One large factor weighing against ex parte reexamination is that it allows the patent holder to add or amend its claims and improve its position. The amended or new claims must be supported by the original application and be narrower in scope.

Once a request for ex parte reexamination is ordered, neither the patent owner nor a third party requestor can stop it. The USPTO will reexamine the patent and allow and/or reject claims regardless of any subsequent settlement or agreement. Thus it may be difficult for a third party to negotiate a favorable license while a patent is under reexamination. In contrast, the time, money and resources associated with district court litigation often motivate parties to settle.

All three options for challenging patent validity have benefits and drawbacks. The best option will depend on particular circumstances.