If you’re a company that has invented or built something great, you know that patent disputes are common place. After a patent is filed, there are still a few options to challenge that patent and on various grounds.
Under the America Invents Act, a challenging party can seek relief through three basic avenues: Inter Partes Review; a Post-Grant Review; or the Transitional Program for Covered Business Method Patent Review. In his May ABA Just Resolutions E-News article on post grant review proceedings, Cloutier Ortega’s Bill Campbell adds a fourth option to the mix of patent dispute resolution: ADR.
Bill says that ADR in patent disputes could result in less legal fees, faster proceedings for the parties, and legal results that both parties might agree on.
However, if ADR seems like a good option when you’re faced with the trial before the Patent Trial and Appeal Board (the “Board”), you should move quickly.
Bill says that under normal conditions, it will take eighteen (18) months or less from the time a post-grant proceeding is filed until a written opinion is published by the Board. To be successful at ADR in a patent dispute, you’ll have to be aware of and file for ADR before the Board reaches a decision in the post-grant proceeding. If you reach an ADR settlement too late, the Board may deny requests to terminate the post-grant proceeding and issue a decision resulting in something neither party agreed on in ADR. Also, ADR protects a patent owner from making public disclosure of prior art and legal theories, among other things.
In general, there are three basic kinds of patent dispute ADR: neutral evaluation, mediation, and direct negotiation between the parties. Bill explains how to use these methods of ADR and when they might be most successful. Bill writes:
To employ an early neutral evaluation process, a party to a dispute (or a potential dispute) makes a presentation to a neutral third party and solicits an opinion about the strength of that party’s position with respect to the dispute (or potential dispute). To render the necessary opinion as regards to patent validity, the neutral third party must be legally and technically qualified to render the opinion. Of course, this approach may be used by each party standing alone, or by both parties together.
Mediation and direct negotiation between the parties may be effective means of ADR when applied to patent validity disputes. As would be the case with early neutral evaluation employed by the parties together, for mediation and/or direct negotiation between parties to be effective, the issues relating to patent validity must be sufficiently developed to allow the parties to evaluate each other’s position. This will likely require the parties to exchange sufficient information to allow them to gain the appropriate understanding (and this might not occur until after the patent owner has filed the preliminary response to the petition).
Trial before the board could cost at least tens of thousands of dollars, it takes time, and it’s a public event. ADR address all of these issues and could be an effective method of dispute resolution if you know about it. If you’re interested in reading more about ADR in patent disputes or if you have a patent dispute you’re dealing with, you can find Bill Campbell’s full article here [http://bit.ly/2sYymXZ] or feel free to call Cloutier Ortega for legal help at (206) 319-9001.
Written by William Campbell, edited by Joshua Bam
Joshua Bam is a proud member of the Cloutier Ortega team. As a business and nonprofit attorney, Josh has helped clients with entity choice and formation, commercial transactions, product development, contract negotiations, tax strategies, and corporate compliance. Josh is dedicated to providing impactful legal services for small businesses and entrepreneurs.