Patent Office Guidance at Odds With Court Strategy, Attorneys Say

Practitioners are increasingly skeptical about guidance discouraging parallel patent attacks, saying that filing a single challenge would at times run the risk of sacrificing a strong argument that could be used to attack a patent in court.

The U.S. Patent and Trademark Office said in July that filing two or more administrative challenges to a patent around the same time might pose “a substantial and unnecessary burden” to the agency’s Patent Trial and Appeal Board, which hears the challenges. Yet some attorneys who practice at the PTAB say it sometimes pays off to file parallel petitions—even if it means a ...