IPRs are a good blend of regular Patent Office prosecution and patent litigation — with strong elements of both, notes Monte Falcoff.
“Our firm has brought and defended many of these new IPR proceedings over the past year, in conjunction with a Federal lawsuit, or as stand-alone actions,” he says. “Patent Office prosecution has its own set of very formalistic rules that takes years to master, and then the unique technical and legal aspects of patent interrogatories, document requests and depositions are added.”
The unique thing about the new IPR proceedings is that some discovery is allowed – albeit limited, he explains. If the patent challenger uses a technical expert or other person to submit a declaration as to the obviousness, or if the patentee uses an employee declaration of testing results or to prove commercial success of the invention, the other party can take the deposition of the declarant and use it before the USPTO judges.
According to Falcoff, the new IPR proceedings are now more like European Patent Office opposition proceedings but with the extra advantage of some narrowly focused discovery, which the EPO does not allow.