How to Survive Post-Grant Proceedings

Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being invalidated, even taking into consideration the decreasing institution rates and claim cancellation rates at final written decision.[i] So it is imperative to both draft stronger patent applications and to more effectively prosecute applications to deter petitioners from even filing a proceeding.

This article addresses three tips that strengthen patents and deter post-grant challenges.

Tip #1: Draft a thorough specification with many embodiments.

A patent specification with a thorough explanation of multiple embodiments has advantages. For example, a patent specification with a thorough explanation of multiple embodiments provides patent owners with more options when arguing claim construction positions in a post-grant proceeding. Also, a thorough patent specification provides patent owners with more distinguishable subject matter to pursue in claim amendments made during the post-grant proceeding, a reissue application, or a continuation application.

Tip #2: Vary claim scope and make dependent claims meaningful for layers of validity.

Patent owners should file larger claims sets with varying claim scope for three reasons.

First, large claim sets are more difficult to comprehensively challenge in a single AIA petition, especially given petition word limits.[ii] And since a petitioner oftentimes files the petition before the patent owner designates asserted claims in parallel district court litigation, the petitioner oftentimes files against all of the claims. So more claims forces multiple petitions, increasing time and cost for the petitioner.

Second, varying claim scope—including the scope of the dependent claims—usually requires more complex prior art searching and multiple AIA petitions. Dependent claims with meaningful limitations that are varied between different claim types—e.g., different dependent claim limitations for apparatus claims versus method claims—can be more difficult to challenge in a single petition because arguments cannot be “re-used.”

Finally, in addition to increasing the difficulty of a post-grant challenge, dependent claims with meaningful (and more focused) limitations may increase the likelihood of validity under non prior art based attacks of the patent in litigation, such as §§ 112 and 101 attacks.

Tip #3: Perform a search and submit prior art during examination.

A benefit of conducting a prior art search prior to drafting a patent application is the ability to draft the specification and claims with an emphasis over the closest known prior art. And identifying the best prior art to the examiner should remove or damage that prior art from being assertable in an AIA petition under 35 U.S.C. § 325(d).

The above practice tips are among a variety of techniques that practitioners can use to strengthen their patents and to make them more difficult to challenge in post-grant proceedings. Though these practice tips may incur additional time and cost for the practitioner, some patent applications may warrant this additional expense, especially patent applications that are likely to be licensed or enforced.

In a future issue, we will provide three prosecution tips to mitigate invalidity attacks at the PTAB or in district court.

[i] https://www.uspto.gov/sites/default/files/documents/trial_statistics_20180228.pdf
[ii] 37 C.F.R. § 42.24(a)

This article appeared in the June 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.