Printed Publications at the PTO

Printed Publications at the PTO

Publication

Related Documents

Related Solutions

Providing comprehensive solutions for the acquisition, enforcement and protection of IP.

By patenting their innovations, our clients increase the value of their intellectual property and enhance their ability to compete in the marketplace. We work with laboratory and research teams and R&D and product development groups to determine whether, when and where it is in our clients’ business and technical interests to seek patent protection. And we don’t just file patent applications. Drawing on our experience with patent litigation, corporate financings and technology transactions, we implement IP strategies that conserve resources, add measurable value and give our clients a cost-effective and commercially practical competitive edge.

We help clients obtain more than 750 US and foreign patents each year, covering innovations that span the technological spectrum, including aerospace, biochemistry, biotechnology, business methods, chemistry, computer science, fuel cells, genetics, high-speed data communication, integrated circuits, materials science, medical devices, nanotechnology, pharmaceuticals, semiconductor devices and processes, and software.

We also prepare and prosecute patent applications internationally under the Patent Cooperative Treaty and by working with a network of seasoned patent lawyers around the world. Our experience extends to appeals, interferences and opposition proceedings within the US Patent and Trademark Office, the US Court of Appeals for the Federal Circuit and the European Patent Office.

A global team handling highly complex and sensitive matters in all aspects of litigation.
Clients trust us to protect their most important intellectual property matters.
Combining our trial and appellate strengths allows us to shape litigation strategy from the outset to maximize the likelihood of ultimate success.
We advise clients on the smartest, most cost-effective ways to challenge or defend issued patents.
Intellectual Property Litigation

David Cavanaugh and former Counsel Anant Saraswat explore how the implementation of the America Invents Act has led to an increase in inter partes review proceedings at the PTAB as a way to challenge the validity of a patent in this article published in Bloomberg BNA's Patent, Trademark & Copyright Journal.

With the implementation of the America Invents Act of 2011, inter partes review proceedings at the Patent Trial and Appeal Board (PTAB) have become a popular way to challenge the validity of a patent. The types of information which may be used to challenge validity are limited to "patents and printed publications." Typically, when practitioners think of "printed publications," they think of articles in academic or industry journals. However, sometimes useful prior art references are neither patents nor journal articles, but another type of document. In such instances, a party contemplating a validity challenge should consider whether the document is a "printed publication" under the statute.

This article surveys recent PTAB decisions which provide an indication how the PTAB is evaluating the status of a document as a printed publication. The article also provides guidance on what evidence the PTAB has considered persuasive and what has been found wanting.

Authors

Notice

We appreciate your interest in WilmerHale. While we are pleased to have you contact us, please keep in mind that merely contacting WilmerHale does not create an attorney-client relationship. Such a relationship will not arise until the Firm agrees in writing to represent you in connection with a particular matter. Importantly, unless and until this has occurred, you should not provide us with any confidential information, and we have no duty to keep confidential any information that we may receive from you. Thank you for your understanding.

I Accept Cancel