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ARTICLE · 13 FEBRUARY 2014

Arbitration Proceedings Do Not Trigger The One-Year Bar Period For IPR

Morrison Foerster
Morrison Foerster
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Although an "inter partes" review can be a powerful weapon to challenge a patent, it comes with a key limitation: a petition for IPR cannot be filed more than one year after the requester has been "served with a complaint alleging infringement of a patent."

United StatesLitigation, Mediation & Arbitration
Matthew Kreeger
Matthew Kreeger
Whitney McCollum
Whitney McCollum
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Although an inter partes review (IPR) can be a powerful weapon to challenge a patent, it comes with a key limitation: a petition for IPR cannot be filed more than one year after the requester has been "served with a complaint alleging infringement of a patent." Several cases have raised the question:What if a party is served with an arbitration demand alleging infringement? Does that trigger the one year time limit for filing an IPR petition? The Patent Trial and Appeals Board (PTAB) recently gave us an answer: "No."

INTER PARTES REVIEW

IPR is a procedure created by the America Invents Act (AIA) that allows a third party to challenge the patentability of one or more patent claims based on prior art patents or printed publications. IPRs were first made available on September 16, 2012, and apply to any patent issued before, on, or after that date.

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