Texas Lawyer Guest Article: Consider the Benefits of Contested Review Proceedings

01/22/2013

The U.S. Patent and Trademark Office is opening a Texas regional satellite office in downtown Dallas, serving the regional patent community in connection with patent procurement and proceedings before the newly formed Patent Trial and Appeal Board (PTAB). While a regional patent office will benefit Texas-based inventors, it also will handle contested trial proceedings such as inter partes review and post-grant review proceedings.

These contested review proceedings typically will occur parallel to district court litigation. Many district court cases likely will be stayed during at least part of the PTAB review. For this and other reasons, the PTAB review proceedings will impact patent litigation in Texas and elsewhere.

The potential for parallel litigation at the district court and PTAB gives rise to a number of strategic considerations for patent holders and alleged infringers. Some of the strategic considerations for the now-discontinued inter partes re-examination carry over and apply equally to inter partes review. Other considerations will change or be entirely new. Here are some questions general counsel will need to consider.

Excerpted from Texas Lawyer, January 22, 2013. To view full article, click here (subscription required).

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