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America Invents Act Post-Grant Oppositions After Two Years: Where do we go from here?

Sheridan Ross Shareholder Doug Swartz was quoted in the October 2014 issue of Bloomberg BNA’s Patent Trademark & Copyright Journal marking the two year anniversary of post-grant opposition proceedings.  The article addressed the America Invents Act, First-Inventor-to File, Post-Grant proceedings, challenges and impact of Oppositions.

Doug Swartz commenting on the impact of Post-Grant Review petitions on universities stated, “In my opinion, universities and [state university technology transfer offices, or TTOs,] will see a substantial amount of Post-Grant challenges.”  Noting that TTOs are state entities with 11th Amendment immunity, he went on to further say, “university licensing targets could not file a declaratory judgment action simply based on university patent assertion.  Post-Grant proceedings, however, now provide licensing targets with an avenue, that is not barred by the 11th Amendment, to challenge asserted patents.”

According to Swartz, universities will have to incur the additional expense necessary for stronger patents. This means they must make more extensive prior art disclosures, including conducting pre-filing prior art searches, and avoid overly broad claims that would be open to Post-Grant challenges. “As this will represent a higher cost per patent, we anticipate universities and TTOs will more carefully screen inventions and therefore file fewer patents applications.”

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