Analysis

How To Prepare Patents That Can Survive AIA Reviews

By Matthew Bultman (November 15, 2016, 2:02 PM EST) -- The passage of the America Invents Act and the new proceedings it created to challenge patents has had a marked impact on patent prosecution, attorneys say, forcing inventors to take a hard look at ways to draft new patents that can survive review at the Patent Trial and Appeal Board.

In the five-plus years since the AIA was enacted, PTAB reviews have emerged as an effective tool for challenging patent validity. As of Sept. 30, there were 1,214 final written decisions in inter partes or covered business method reviews. Just over 1,160 of those decisions, or 85 percent, resulted in at...

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