In this edition of The PTAB Review, it’s all about timing. We examine that an inter partes review (IPR) is time barred, and may not be instituted, if a petitioner was served with a complaint alleging infringement of the patent more than one year before the filing of the petition. The PTAB had interpreted that requirement as not applying to a complaint that had been voluntarily dismissed, reasoning that dismissal leaves the parties as if the action had never been brought. The U.S. Court of Appeals for the Federal Circuit rejected that reasoning in Click-to-Call Technologies. We also examine how any petition-filing strategy should look beyond the idealized timelines the U.S. Patent and Trademark Office publishes and consider what the effects of an initial delay of up to three months (added to an 18-month timeline) might be. In addition, we discuss that the timing of filing an IPR petition has always presented an interesting conundrum. If petitioners file too early, they risk foregoing better prior art that may be discovered later on.

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