Strengthen your patent against Inter Partes Reexam

One of the easiest ways for infringers to challenge an issued patent is through the Inter Partes Reexam process, commonly known as IPR. To successfully challenge a patent, someone has to produce a prior art document that would have changed the examiner’s mind. This is known as raising a substantial question of patentability based on this new prior art.

The prior art can come from anywhere. A classic example is some dusty master’s degree thesis that sits on the shelf of some foreign university, although blog posts and websites are often cited.

The toolset used by examiners includes incredibly powerful search systems, but these are understandably focused on patent prior art and much less on scientific papers and websites, although you see these types of prior art cited from time to time.

How do you make your patent immune to Inter Partes Reexam?

The best way is to get as much relevant prior art in front of your examiner and let them consider all of it. If you think your patent would be challenged by someone in the market based on their existing products, make sure you provide documentation about that product to the examiner for consideration.

One of the reasons why people don’t do this is because they are afraid that their patent would not be granted if we looked for prior art.

At BlueIron, we *want* the patent challenged as much as possible through the examination period. The more prior art considered by the examiner, the much stronger that patent will be – and the less likely that it will be challenged by IPR.

We often have a roadmap of competing products and potential licensees in a client’s space. We use this roadmap to make sure that the examiner considers all of the competing products and, when the examiner says that our invention is patentable even in light of the competing products, we know we have a solid asset.

One quick way to assess patent quality is to look at the list of cited prior art for an issued patent. If there are only 4-5 references, all cited by the examiner, there is a good chance that a searcher could find something to challenge the patent for an IPR proceeding. If there are lots of references, especially non-patent references that show competitor’s products, you are probably looking at a much stronger patent.