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5 Surprises from the First 2 Years of AIA Reviews

September 11, 2014

​Fenwick & West intellectual property partner Stuart Meyer was featured in a Law360 article examining ways in which the patent review system created by the America Invents Act (AIA) and implemented two years ago by the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) has surprised patent lawyers.

One unexpected development is how strictly the new rules have been applied. Meyer cited the PTAB's rule preventing the introduction, at oral argument, of information that was not included in the briefing—for example, its refusal to entertain a point or exhibit that was not submitted in a filing.

The rule is "very strictly construed, almost to the point where you wonder: What's the point of the oral hearing if you're just going to read the papers to the board?" Meyer said. "Although I don't think it's quite that bad."

According to Law360, other AIA surprises include the popularity of using the new proceedings to challenge patents, the difficulty of amending patents under the new system, the increased likelihood that a complete invalidation of claims will be granted, and the lack of guaranteed stays for district court litigation that is pending at the same time as AIA proceedings.

Fenwick has a new PTAB database, founded by Meyer, which can be used to follow the latest developments in post-grant space and to examine the key takeaways for recent PTAB decisions.

The full article is available through the Law360 website (subscription required).