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IP: The greatest benefit of post-grant review: The panel of experts

Congress ensured challengers and patent owners appear before an experienced and educated panel focused on fact-finding

Perhaps the greatest benefit of the new America Invents Act (AIA) post-grant proceedings for both patent owners and challengers is that they are heard by the Patent Trial and Appeal Board (PTAB). This is a panel of experienced administrative patent judges who habitually prepare extremely well for each case and concentrate on details and fact-finding. With this approach, the PTAB provides a process for challenging patents that is based as much as possible on evidence and not emotional appeals. A good understanding of the unique way in which the PTAB operates is crucial for all parties involved in an AIA post-grant review proceeding.

All administrative patent judges hold degrees in science or engineering and most hold advanced degrees in these areas. They all have law degrees and are members of at least one state bar association. This background ensures administrative patent judges understand both the applicable technologies and patent law when evaluating AIA post-grant review petitions.

Contributing Author

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Michael R. Fleming

Michael Fleming is a lawyer with Miles & Stockbridge’s Intellectual Property & Technology Practice. He co-leads the firm’s Post-Grant Team and is...

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