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IPR System Upheld

Posted Friday, October 14, 2016 by Jim Ruttler

The Supreme Court denied two petitions in Cooper and MCM this week thereby upholding the constitutionality of inter partes review proceedings. What is likely to come as a shock to a majority of patent attorneys, the Supreme Court apparently did not have any problem with the Patent Office being in charge of granting and destroying patent rights independent of an Article III judge. So, the IPR proceedings apparently remain legal and, unfortunately are here to stay as part our the patent system.

What this means practically is that even if you are granted a patent, the same patent office that granted you the patent can later take it away if they feel a mistake was made. Old legal strategies are no longer effective in this unfair and uncertain system. Inventors and companies must adopt new strategies to minimize the effect of IPR proceedings.

First, always keep a continuation application pending even if you obtain a patent. This way, if your issued patent ends up being revoked, you can always pop out another one using your continuation application.

Second, consider filing a family of applications with overlapping subject matter and claims. A patent portfolio is more difficult and more expensive to later challenge because each patent must be separately considered.

Third, draft at least one picture type claim of high specificity in addition to broad claims. This array of specificity can offer broad protection with the insurance of having at least one narrow claim that would be less likely to be challenged.

Fourth, file design patent applications simultaneously with utility patent applications covering similar subject matter. Design patents are harder to challenge, easier and cheaper to obtain, and currently offer enhanced damage potential.

These strategies will help innovators water down the effects of the IPR proceedings.

IPR System Upheld ›› Ruttler Mills PLLC