Steve Hall, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, will be speaking at the Defense Research Institute‘s (DRI) Intellectual Property Seminar on the topic “Using the AIA’s First to File Rule and the Written Description Requirement to Invalidate Patents” on May 6, 2016 in Nashville. Mr. Hall’s presentation will teach attendees how to use the “written description” requirement, along with recent amendments to the Patent Act, to challenge a patent’s validity in a way that was not available to defendants before 2013, when the First-to-Invent features of the America Invents Act went into effect.
Event details to follow.
By Stephen C. Hall
Inter Partes Review (“IPR”) is a trial proceeding established by the America Invents Act that started in September 2012. Conducted before the Patent Trial and Appeals Board (“Board”), IPR allows an interested party to challenge claims in a patent for obviousness or lack of novelty, based on prior art patents or printed publications. Generally, IPR involves two steps: (a) filing a petition, which may (or may not) be followed by the patent owner’s response, and the Board rendering an “institution decision” within six months of petition; then (b) if the Board decides to institute IPR, it should in most cases enter its final determination within one year of institution. To institute an IPR (step “a” above), the Board must find that a reasonable likelihood exists that the petitioner would prevail with respect to at least one challenged claim.
Using IPR, petitioners have challenged thousands of claims contained in hundreds of issued patents. As discussed below, data existing on the USPTO website suggests a Continue reading