Are there any changes you foresee based on Oil States?
We believe there will be an uptick in IPR filings in the near term. A petitioner must file its IPR petition within one year of being served with an infringement complaint, otherwise the PTAB is barred from instituting the IPR.1 After the Supreme Court granted certiorari in Oil States last June, parties continued to file IPR petitions because failing to do so would have barred them from later filing their petitions. The Oil States decision date was far enough in the future that parties could not wait to file their petitions. But over the past few months, parties have been anticipating the imminent arrival of Oil States. At least some would-be petitioners who are not up against their one-year bar may have held off on filing to avoid revealing their invalidity arguments in a proceeding that ultimately could have been held unconstitutional. We expect to see those petitions work their way into the system over the next few months.
Footnote
1 35 U.S.C. § 315(b).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
