Arbitrate Without Losing the Inter Partes Review Option


New York, NY (March 26, 2018) – NAM (National Arbitration and Mediation) is pleased to announce that an article written by Jeffrey A. Schwab, Esq. entitled, Arbitrate Without Losing the Inter Partes Review Option, will be published by the New York Law Journal as part of its Intellectual Property Special Report on Monday, March 26, 2018.

Jeffrey Schwab is a NAM neutral and leading patent attorney, specializing in all aspects of intellectual property, licensing and advertising law. For more than 40 years, he has been active in resolving numerous disputes involving patents, complex licensing, trademark rights, alleged trade secret violations and copyrights – including issues relating to the appropriate compensation for usage.

In the article, Mr. Schwab offers his insights on why the benefits of arbitration provisions in a patent license can be enhanced under the American Invents Act (AIA). His analysis explores the benefits to a licensee that can flow from arbitrating key issues other than validity, and avoid the onerous consequences that are often triggered under the terms of the license, if a validity challenge is made. Because the right to bring an IPR is not considered a litigation, which would otherwise place a one-year restriction on initiation of such an option, Mr. Schwab states “the licensee can defer the IPR validity challenge until after the arbitration on other issues is completed. Thus, the licensee can have it both ways – i.e., arbitrate non-validity issues, and only challenge validity if the arbitration decision is unsatisfactory.”

As a first chair litigator, Mr. Schwab has significant experience litigating patent, copyright, trademark, unfair practices, International Trade Commission proceedings and patent post-grant proceedings. Both as counsel and as a neutral, he has helped to fashion resolutions to complex matters.

Jeffrey A. Schwab, Esq. is available to arbitrate and mediate intellectual property cases throughout the United States.


Founded in 1992, NAM (National Arbitration and Mediation) is recognized for its superb customer service and exceptional panel of arbitrators and mediators. For the third year in a row, NAM was named Best ADR Firm in the United States by the 2018 National Law Journal Annual Reader Rankings Survey. Also, six of NAM's neutrals were named National Law Journal 2017 Alternative Dispute Resolution Champions as part of a select group of only 37 nationwide. NAM also ranked as a Best National ADR Provider by the 2017 Corporate Counsel Best of Survey. The New York Law Journal Annual Reader Rankings Survey selected NAM as the No. 1 ADR firm for the past seven years. NAM was also voted a “Best Overall ADR Provider” in the 2017 Best of The New Jersey Law Journal and Best of the Midwest annual surveys.

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