Am I crazy or was there a strategy reason that inter partes review at USPTO was disfavored over trial? Like the legal standards are easier for the patentholder at USPTO or something like that?

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thayne a minute ago | parent | next [-]

I would guess USPTO (or at least some people at it) probably wants it, because they would rather not deal with these reviews.

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greensoap 6 hours ago | parent | prev | next [-]

Cost -- it is way cheaper to use IPR and avoid discovery associated with the other factors that happen at trial. Speed, the PTO is generally faster.

	▲	pclmulqdq 2 hours ago \| parent \| next [-]
		It's not really about cost for most people who really like the IPR. It's a way to get a second chance to invalidate a patent and a way to drag out litigation. The cost of an IPR is actually not that much less than the cost of invalidation during a trial (although it saves you on other discovery because you can often stay the trial during your IPR), but it's a second invalidation path you can take at the same time.
	▲	sthu11182 2 hours ago \| parent \| prev [-]
		The reality is that you get multiple bites at the apple. You challenge at trial and in an IPR. Lose both, challenge with an EPR and appeal the trial. IPRs were initially created to simplify trial and cost, but once the estoppel provisions were determined not to have much teeth, it just became something you did because there was no downside.

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dmoy 5 hours ago | parent | prev [-]

USPTO doesn't really have the budget or even often the expertise/depth.

> Like the legal standards are easier for the patentholder at USPTO or something like that?

It is much easier to get a patent than it is to use that patent successfully in legal proceedings. The bar that you have to clear to get it through the USPTO has never been particularly high.

So this is kinda, if you squint at it a little, just writing down what the status quo already is.

(As sibling mentions - if it did work, of course it's way cheaper to nip it in the bud earlier. You just can't really guarantee that you'll get enough expert eyes to get a reasonable decision out of the USPTO)

I would have to ask more to be able to explain more, but that's how things have been explained to me growing up.

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rmunn 4 hours ago | parent [-]

> USPTO doesn't really have the budget or even often the expertise/depth.

Oh yeah, there are so many patents with obvious prior art, or that are so much "the obvious way to do it" (to anyone with expertise in the field) that they're inherently unpatentable, but which get through the US Patent and Trademark Office because the reviewers have no experience in software development, so they get fooled by language designed to conceal what the patent is really about.

I still remember a case from the early 2000's or perhaps late 1990's, which I can't dig up now since I don't remember enough keywords to get a search engine to find it for me. So no link, sorry, you'll have to rely on my could-be-missing-a-detail memory. But I recall reading a patent and realizing that under the complex language, it was essentially patenting scrollbars, which at that point had been around for years. But to someone who didn't understand programming terminology, they might have thought this was a novel idea, rather than a snowjob designed to hide the fact that prior art on this patent submission had existed for over a decade, making the patent submission invalid on its face.

There have been other patents which, when I read them, I realized were patenting something that had lots of prior art, but I don't remember them. Maybe someone has more examples. But that patent that boiled down to "clicking a mouse on a designated area to scroll a page" stuck in my mind for years. (At least two decades, in fact).

	▲	dmoy 3 hours ago \| parent [-]
		> Oh yeah, there are so many patents with obvious prior art, or that are so much "the obvious way to do it" (to anyone with expertise in the field) that they're inherently unpatentable, but which get through the US Patent and Trademark Office because the reviewers have no experience in software development, so they get fooled by language designed to conceal what the patent is really about. Yea that's exactly what I mean One solution would potentially be to increase the USPTO budget by a lot. But... nobody does that I guess. So here we are.