[Video Series] Sterne Kessler on America Invents Act, USPTO Contested Proceedings, & Patent Office Litigation Predictions

Washington, D.C.-based IP law firm Sterne Kessler has issued an informative series of videos featuring Robert Greene Sterne, the firm’s founding director, discussing the “huge challenges facing the new Patent Trial and Appeal Board at the United States Patent & Trademark Office.” For your interest, Mr. Sterne’s predictions:

1. The Spike: “…discusses the spike in patent reexamination applications prior to the America Invents Act deadline of September 16, 2012.”


2. How do we get it all done? “In light of the spike in inter partes and ex partes patent reexamination prior to September 16, 2012, and combined with the new inter partes review and covered business method patent review filings made on or after September 16th, this video attempts to answer ‘How will they get it all done?’”


3. Obviousness is King: “… addresses the definition of obviousness in context of the new contested proceedings at the USPTO. He also predicts the role that obviousness will play in these proceedings over the next 12-24 months, and provides a brief summary on the difficulties patent owners may encounter as a result.”


4. The Inequitable Conduct Defense is Alive & Very Well: “[H]ow standards for the inequitable conduct defense work in the new world of patent office litigation/contested proceedings…”


5. To Stay or Not to Stay: “…addresses the uncertainty related to concurrent proceedings at the USPTO, district courts, and the U.S. International Trade Commission over the next 12-24 months. ”


6. Estoppel Peek-a-Boo: “…discusses estoppel issues related to the new patent office litigation/contested proceedings at the United States Patent & Trademark Office, as well as concurrent and/or future district court proceedings.”

Mr. Sterne is also the editor-in-chief of Patent Office Litigation, a two-volume book focused on the new contested proceedings under the America Invents Act. You can find the firm’s analysis and commentary on this and related topics on JD Supra>>