IP Law Watch: Professor Lisa Dolak Reviews USPTO Post-Grant Contested Proceedings
On July 24th, the New York State Science & Technology Law Center hosted a webcast with Syracuse University College of Law Professor Lisa Dolak. Professor Dolak provided a review on the new Patent Office post-grant contested proceedings implemented in accordance with the America Invents Act. These new proceedings offer a variety of new courses of action for parties that wish to challenge patents while avoiding district courts.Professor Dolak gave an overview of the various proceedings including: inter partes review, post-grant review, transitional post-grant review for covered business method patents, and derivation proceedings. She explained changes and future plans for the Patent Trial and Appeal Board (PTAB). She then reviewed the specific procedures of the PTAB at each stage of the proceedings.
Professor Dolak identified and discussed some of the challenges and opportunities that the new proceedings present for both petitioners seeking to challenge patents and patent owners. She noted particular concerns that both petitioners and patent owners will need to consider such as the speed of proceedings, the strict requirements of petitions, and the generally more favorable conditions under the new design for petitioners.
A recording of the webcast and a copy of Professor Dolak's slides are available in the NYS STLC webcast archive.