Practical Post-Grant Tip: Waiver of Service

Written by Joshua Griswold

When considering an inter partes review in conjunction with a pending patent infringement suit, defendants must time the filing of their petition to beat the one-year-from-service bar imposed by 35 U.S.C. 315(b). In short, the statute bars institution of inter partes review on any petition filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. Id. When service is waived, the PTAB has repeatedly held that "service" occurs upon filing the waiver with the court, not earlier. See e.g., Brinkmann Corp. v. A&J Manufacturing, LLC, IPR2015-00056, Paper No. 10 (PTAB March 23, 2015). Thus, the next time you represent a defendant, consider waiving service. A plaintiff's delay in filing the waiver with the court can benefit you by delaying the bar date, sometimes providing valuable weeks or months to file or re-file inter partes review.As a plaintiff, act quickly to complete this ostensive housekeeping matter and file the waiver of service with the court directly upon receipt.