Prosecuting to Avoid Post-Grant Challenges - I
Overview: In the last post I referenced measures that could be taken to improve your future patent filings in order to survive claim challenges from IPRs, CBMs, and PGRs. This article is about how you can guide prosecution counsel to draft applications that reduct chances of institution of trial.
The proper preparation of a patent application is an exercise in good judgment. Wise patent managers understand that patents are drafted with a limited amount of knowledge of the prior art. They also understand that examination is not a perfect process, and that the amount of prior art before an examiner is relatively limited compared to the prior art unearthed during litigation.
The AIA substantially changes the way patents are litigated. Parties to a litigation will frequently file petitions for post-grant proceedings to challenge claims and test the patent. Many times the petitions are coupled with motions to stay the parallel litigation in order to give the Patent Office a chance to assess the patentability of the claims. The Board has APJs with substantial patent law and science/engineering training and experience. Patent Owners have to carefully consider the trained eye of the PTAB APJ before commencing patent assertions. This new dynamic in turn changes the way patents are drafted. Practices that were commonly acceptable in the past are no longer effective in view of AIA Patent Office trials.
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