Foust Talks Opportunities for Using IPRs in Daily Business Review

Shook, Hardy & Bacon Miami Of Counsel Amy Foust discusses strategic opportunities to use Inter Partes Reviews (IPRs) for patent claims in an April 4th article for the Daily Business Review.

Since 2011, when America Invents Act created new administrative proceedings for challenging possibly invalid patents, companies have had to adjust to the new IPR guidelines.

Foust gives a few examples of how using an IPR could help companies achieve business goals, including challenging competitor’s patent-based advertising claims. She also discusses filing IPRs prior to launching a new product, saying, “ if you know that a key competitor has a patent that might cover your new product, and you believe that the patent claims are not new or inventive, an IPR could result in the cancelation of the relevant claims. This reduces the risk of expensive, time-consuming disputes that might arise after the product is launched.”

Although Foust recommends using an IPR before launching a new product, she also warns readers to be conscious of timing. Because an IPR generally takes 12-18 months from filing to final decision, Foust advises readers to not file an IPR if your product has already launched, or will launch before the final IPR decision.

Foust says, “For products that have launched or been announced, an IPR should be considered carefully. IPR petitioners are required to identify themselves, so filing an IPR petition may invite greater scrutiny of existing products.” This could, Foust says, “invite a dispute or lawsuit rather than avoiding one.”