The USPTO began operation of the Patent Trail and Appeal Board (“PTAB”) under the power made available to it by the American Invents Act in 2012. Since then, the PTAB has been the forum of choice to challenge the validity of existing patents through a process called Inter Partes Review (“IPR”). However, patents are private property rights and the long-standing norm has been that these kinds of rights should only be taken away in an Article III forum (judge or jury). The case of Oil States v. Greene’s Energy Group, et al. sought to settle once and for all the constitutionality of having an Article I (executive branch) tribunal extinguish patent rights.
Venue for patent litigation had been an agreed concept for close to three decades before the United States Supreme Court came down with its TC Heartland decision. Now with this decision in the books, patent litigation has changed drastically, causing significant impact in certain areas of the country, especially Texas.
One of the dynamics of being involved in IP law is the first-hand experience of the time involved in waiting for a patent to issue. With the current backlog at the U.S. Patent and Trademark Office (USPTO), it can take anywhere from 2-4 years to receive an initial examination. Even after that first examination it can still take another year or so to get a patent application in a condition for allowance, and ultimately issued. Given the fast-paced world of today, it’s no wonder inventors and patent owners alike find this snail's pace a grim experience, and often inquiring about any expediting options.
And, just like driving around stalled traffic in an HOV lane or the TSA PreCheck option over long lines at airport screening, indeed there are situations when one can do just that. But just because one ‘can’, does this mean one ‘should’? Especially when it comes to paying a premium, one really should consider patiently sticking with the status quo.
In a previous post I discussed a number of relevant points related to a business perspective on patent protection, or what I like to refer to as Effective Patenting. As a point of significance I noted that before filing a patent application, it is first important for a business to determine what its objectives are for doing so. Seeking a patent just for the sake of a patent is hardly ever fruitful. I identified three primary objectives for consideration as: Excluding Competition, Marketing Tool, and Revenue Stream. Once objectives are identified, it is time to consider strategy.
The first step in considering patent protection has nothing to do with patents, or the law. Instead, it involves a thorough analysis of your business and a determination of what your goals are. There are probably very few decisions that are made in business that don’t involve a cost-benefit analysis; obtaining a patent is no different. Patents are assets for your business that could pay huge dividends if properly orchestrated.
There are many reasons why businesses want patents, ranging from protection of core technologies to ownership for use as a marketing tool. Odds are that your goals are a hybrid of those two aims. Analyzing your business and determining your direction will often result in an intelligent and effective approach to building a patent portfolio resulting in a true and viable long-term asset.
In my previous ‘inventor series’ post here, I discussed some of the factors and considerations that go into an answer for the question “Should I get a patent?” In order to receive a patent, an inventor must first start with a patent application. The most important part about the patent application - that which defines the legal boundaries - is the claims. Why? Because patent infringement (or non-infringement) is based on an assessment of the claims of an issued patent. Whether it is drafting claims for a new application or amending claims after examination, how the claims are treated during the patent application process is of criticality.