Most companies understand the value of obtaining patents for their products and services. Just as important, however, is the value of product clearance, or freedom to operate (FTO), analyses before releasing a product or service to market. The purpose of an FTO analysis is to ascertain the risk that the product or service will run afoul of third-party patents. If a problematic patent is discovered during an FTO analysis, it may be desirable to be pro-active and challenge the patent before litigation ensues.

The America Invents Act created new tools for challenging patents in the U.S. Patent and Trademark Office. These are inter partes review, covered business method patent review and post-grant review. In each of these proceedings, a three-judge panel of the Patent Trial and Appeals Board decides whether to grant a petition to institute review of a patent. If the PTAB grants the petition, it institutes an adversarial proceeding between the petitioner and the patent owner. At the conclusion of the proceeding, the PTAB assesses the patentability of the challenged patent claims based on the evidence presented by the parties. Claims that are determined to be unpatentable are “canceled.” Claims that are not canceled are “confirmed.” Claims that have been finally canceled cannot be used to assert patent infringement.

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