Fenwick Develops New Patent Practice Around AIA Post-Grant Proceedings

Mountain View, CA (August 21, 2012) - On September 16, 2012, a year from the date of enactment, many provisions of the Leahy-Smith America Invents Act (AIA) will go into effect. Fenwick & West is poised to help clients navigate the most significant modification to the U.S. patent system in 60 years. In particular, the firm is focused on revision and expansion of post-grant opposition proceedings and has built a new practice area around developing business focused strategies for dealing with patent disputes under the new rules.

The Post-Grant Proceedings Practice, co-chaired by Rajiv Patel and Stuart Meyer, leverages extensive experience in patent reexamination proceedings and parallel litigation to best position companies in the evolving IP management landscape. The result is a cost-effective approach to resolving disputes over patent validity and navigating the opposition process in pursuit of business objectives.

The America Invents Act (AIA) makes fundamental changes to the patent filing system, moving the U.S. from a “first to invent” to a “first to file” system which is more consistent with international practices. In addition, the AIA eliminates interference proceedings and develops post-grant opposition proceedings. The newly created Patent Trial and Appeal Board (PTAB) has been designed to leverage the U.S. Patent and Trademark Office’s regulatory and technical expertise in patent reexamination by expanding its scope to include other validity disputes in quasi-litigation contexts. This will potentially allow parties to resolve validity disputes without introducing the high costs and complicated proceedings of in-court litigation to the opposition process.

About Fenwick & West’s Patent Practice and Patent Litigation Practice

Fenwick & West has established itself as a leading intellectual property law firm in the United States. The firm has extensive experience with managing and exploiting intellectual property portfolios and litigating complex patent disputes for technology and life sciences clients of national and international prominence. In recent years, the firm’s efforts have resulted in the annual issuance of more than 250 patents and the filing of nearly 1,500 new patent applications in the United States and around the world. And working in close collaboration with our transactional patent group, our litigation attorneys have handled some of the most prominent IP disputes over the past two decades, including securing one of the largest IP litigation settlements of 2005—a $400M settlement for client Compuware against IBM, one of the largest patent verdicts—a $74.7M patent litigation verdict for client Asyst Technologies against Jenoptik, and the landmark Righthaven copyright rulings protecting fair use. Fenwick was recently ranked as a Top 25 law firm on Intellectual Property Today’s Patent Scorecard, by IP Worldwide as one of the top dozen firms that Fortune 500 companies relied on for IP litigation, and was honored by InterContinental Finance Magazine’s Legal Excellence Awards as “Law Firm of the Year” for intellectual property.