Patent Office Clarifies One-Year Deadline for Validity Challenges

The Patent Trial and Appeal Board, the patent office body that decides validity challenges, yesterday designated two of its earlier decisions on deadlines for filing petitions as “informative.”

Both decisions concern the time bar for filing inter partes reviews, which give challengers a relatively quick way to attack patents outside of court. Challengers that have been sued for infringement must file their IPRs within a year of being served with the court complaint. Informative decisions, though not binding, are influential.

In Luv’n Care Ltd v. McGinley, the PTAB refused to take up the IPR because even though the challenger filed its petition before the one-year deadline, it didn’t pay the required filing fees until after.

In Amneal Pharms. LLC v. Endo Pharms. Inc., the challenger’s petition was timely, because even though it saw a copy of the complaint over a year earlier, it wasn’t properly served until later. The one-year deadline starts when the complaint is actually served on the challenger, the PTAB said.

The cases are Luv’n Care Ltd v. McGinley, P.T.A.B., No. IPR2017-01216, designated informative 1/10/18 and Amneal Pharms. LLC v. Endo Pharms. Inc., P.T.A.B., No. IPR2014-00360, designated informative 1/10/18.