Navigating PTAB Proceedings: Choosing the Right Path - IPR, PGR, DER, or CBM?

When facing a patent dispute, it's crucial to understand the different proceedings available at the Patent Trial and Appeal Board (PTAB). Each proceeding offers unique advantages and considerations. In this article, we will explore the key factors to consider when choosing between Inter Partes Review (IPR), Post-Grant Review (PGR), Derivation Proceedings (DER), or Covered Business Method (CBM) review. By understanding the nuances of each option, you can make an informed decision and strategically navigate the PTAB process.

Inter Partes Review (IPR):
IPR offers an effective means to challenge patent validity based on prior art. It provides advantages such as streamlined proceedings, expert involvement, and a higher success rate compared to other options. However, it is important to consider potential limitations, including claim construction restrictions and potential estoppel effects.

Post-Grant Review (PGR):
PGR allows for broader challenges to patent validity, encompassing various grounds such as prior art, written description, enablement, and indefiniteness. The advantage of PGR lies in its expanded grounds for review, providing a wider scope for challenges. However, PGR has certain limitations, including a limited filing window and potential estoppel effects.

Derivation Proceedings (DER):
DER proceedings address inventorship disputes and claims of one party deriving an invention from another. DER provides a focused approach to resolve these issues, ensuring proper recognition of inventorship. However, it is important to consider the burden of proof and evidentiary requirements when pursuing DER.

Covered Business Method (CBM):
CBM review is specifically designed for challenging patents relating to financial products or services. It offers advantages such as broad grounds for review, including subject matter eligibility. CBM review can be particularly beneficial for parties operating in the financial industry. However, eligibility criteria and limitations in scope should be considered when opting for CBM.

Choosing the appropriate PTAB proceeding requires careful evaluation of factors such as the nature of the dispute, available prior art, and strategic objectives. By understanding the nuances of IPR, PGR, DER, and CBM, you can navigate the PTAB process effectively and increase your chances of a favorable outcome. Stay tuned for our detailed exploration of each proceeding to gain valuable insights and make informed decisions in your patent dispute strategy.