When can a patent be challenged in court?

Patents are legal documents that grant inventors exclusive rights to their inventions. They protect inventors by preventing competitors from making, using, and selling their inventions without permission. In exchange for this protection, inventors disclose their inventions to the public, advancing innovation and knowledge.

Although patents can be a significant asset to businesses and entrepreneurs, they can also be challenged in court. Patent litigation can be a costly and time-consuming process, but it can provide inventors and competitors with valuable protection and opportunities. In this article, we will explore when patents can be challenged in court and how businesses and entrepreneurs can benefit from patent litigation.

Invalidity Challenges

One of the most common ways to challenge a patent is to assert its invalidity. A patent is invalid if it does not meet the legal requirements for patentability. The leading grounds for invalidity are:

• Prior Art – A patent can be invalidated if the claimed invention was already known or used in the public domain before the filing of the patent application.
• Obviousness – A patent can be invalidated if the claimed invention would have been obvious to a person having ordinary skill in the relevant field at the time of the invention.
• Lack of Enablement – A patent can be invalidated if the disclosure in the patent application does not enable a person having ordinary skill in the relevant field to make or use the claimed invention.
• Written Description – A patent can be invalidated if the disclosure in the patent application does not provide an adequate written description of the claimed invention.
• Best Mode – A patent can be invalidated if the inventor did not disclose the best mode of carrying out the invention.

Invalidity challenges can be raised at any time during the life of a patent, including during litigation. When a patent is challenged on invalidity grounds, the burden of proof is on the challenger to prove that the patent is invalid by clear and convincing evidence.

Infringement Challenges

Another common way to challenge a patent is to assert that the accused product or process does not infringe the patent. Infringement occurs when a product or process uses all or some of the elements of a patented invention without permission. To prove infringement, the accused infringer must show that every element of the patent claim is present in the accused product or process.

Infringement challenges can also be raised at any time during the life of a patent, including during litigation. When a patent is challenged on infringement grounds, the burden of proof is on the patent owner to prove that the accused product or process infringes the patent.

Inter Partes Review (IPR)

Another way to challenge a patent is through an Inter Partes Review (IPR). IPRs are proceedings before the Patent Trial and Appeal Board (PTAB) that allow a third party to challenge the validity of a patent based on prior art. IPRs were created by the America Invents Act (AIA) in 2011 as a way to provide an alternative to costly litigation.

IPRs can be filed by any person who is not the patent owner. The petitioner must file a petition within one year of the publication or issuance of the challenged patent. If the PTAB grants the petition, it will conduct a trial to determine if the challenged patent is invalid based on the prior art.

One of the advantages of IPRs is that they are conducted before technical expert judges who have experience in the relevant field. This can lead to more accurate decisions and reduce the cost of expert testimony. IPRs also provide an opportunity for the patent owner to amend the claims of the challenged patent, which may help to save the patent from invalidity.

Litigation Strategies

Patent litigation can be a costly and time-consuming process, but it can also provide businesses and entrepreneurs with valuable protection and opportunities. Here are some strategies businesses and entrepreneurs can use to maximize the benefits of patent litigation:

1. Be prepared – Before filing a lawsuit or responding to a lawsuit, businesses and entrepreneurs should conduct a thorough analysis of the strengths and weaknesses of their patent and their opponent’s patent. They should also prepare a litigation strategy that includes a realistic assessment of the costs and benefits of litigation.
2. Consider alternative dispute resolution (ADR) – ADR, such as mediation or arbitration, can be a more cost-effective and efficient way to resolve patent disputes than litigation. ADR can also provide more flexibility in designing solutions that meet the needs of both parties.
3. Choose the right forum – Businesses and entrepreneurs should choose the forum that is most favorable to their case. Factors to consider include the judges, the jury pool, and the law.
4. Build a strong case – Businesses and entrepreneurs should build a strong case by conducting a thorough investigation, collecting relevant evidence, and hiring experienced attorneys and expert witnesses. They should also be prepared to provide clear and concise explanations of their inventions and how they are different from prior art.
5. Consider licensing – If a patent is challenged or found to be invalid, businesses and entrepreneurs may still be able to monetize their inventions through licensing agreements with other companies.

Conclusion

Patent litigation can be a complex and challenging process, but it can also provide businesses and entrepreneurs with valuable protection and opportunities. Whether challenging a patent on invalidity or infringement grounds, or participating in an IPR, businesses and entrepreneurs should be prepared to invest the time and resources necessary to build a strong case. By choosing the right forum, building a strong case, and considering alternative dispute resolution and licensing, businesses and entrepreneurs can maximize the benefits of patent litigation and protect their valuable inventions.