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PTAB Denies Request to Stay Pending Applications

Jim Ruttler, Patent Attorney

Posted Wednesday, May 13, 2015 by Jim Ruttler

The Patent Trial and Appeals Board issued an order in an Inter Partes Review proceeding this past week that provides a clue on how to defend against attacks on existing patents. The IPR system was set up in the America Invents Act and has been widely criticized by patent holders because it has made it easier for infringers to challenge issued patents. Once an IPR is initiated by the Patent Office it results in invalidation most of the time. So, much discussion has centered on how to appropriately defend against such patent challenges. As I said, the Board has now provided a good clue: make sure to keep an application pending at the Patent Office once your patent issues.

In IPR2014-01240, the Petitioner successfully initiated an IPR challenge against the patent owner. However, the patent owner also had another set of applications pending at the Patent Office. The Petitioner got the idea to petition the Board to stay examination of the pending patent applications to prevent them from issuing. To which the Board responded that those pending applications were outside the jurisdiction of the Board and untouchable until after they issued.

This order means that the patent owner can see how the IPR plays out before taking an allowance in the pending patent applications. Should the IPR invalidate the patent owner’s claims, amendments can be made to the pending patent applications to avoid the same outcome.

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