Expert Witness Statements Useful Only When Submitted During Patent Prosecution

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) became available on 16 September 2012. The IPR is a post-grant review procedure to challenge the patentability of issued claims of a patent based on prior art patents and publications. An IPR must be requested within one year of the issuance of the patent. A patent owner — often the inventors — can submit a response if a patent is challenged. The response is known as the Patent Owner Preliminary Response (POPR).

Under the rules, the patent owner cannot “present new testimony evidence beyond that already of record.” Accordingly, in order to make a strong case to defeat institution of the IPR, the patent owner should, in the POPR, rely on declarations from experts and inventors setting forth 35 U.S.C. §§ 103 and 112 positions. The declarations need to be “of record.” In order to get them in the record, patent attorneys need to plan ahead and submit affidavits and declarations during prosecution — long before an IPR is requested. I believe that this is the current best practice for patent prosecution, especially if an IPR is expected.

Two cases illustrating the use of declarations are Anova Food L.L.C. v. Leo Sandau and William R. Kowalski, IPR2013-00114 and Omron Oilfield & Marine Inc. v. MD/TOTCO, A Division of Varco L.P., IPR2013-00265.