Managing Intellectual Property Magazine’s September 2014 cover story on the Patent Trial and Appeal Board (PTAB) discusses how the U.S. patent landscape has evolved since the signing of the America Invents Act (AIA) and the creation of the PTAB. The article recognized Finnegan as one of the top firms for petitioners filing for inter partes review (IPR) and covered business method (CBM) review.
The story is broken out into three sections. The first part takes an overall look at the rise of the PTAB, the surprise of patent owners at the increasing number of IPR and CBM petitions being filed, and what this could all mean for the Federal Circuit. Part two discusses how IPRs and the PTAB have specifically impacted the pharmaceutical industry. Finnegan partner Thomas L. Irving is quoted in the article, citing the pharmaceutical patent industry’s shock by the unexpected popularity of PTAB proceedings among generic pharmaceutical companies looking to invalidate the patents of larger pharmaceutical companies. Irving also shares advice for brand drug patent holders who are faced with protecting their patents in post-grant proceedings. Part three explores the challenges faced by both patent owners and lawyers as they navigate PTAB proceedings. These challenges primarily include the tight timeline, limited testimony and discovery, and the fact that patent owners are finding it difficult to amend claims. Finnegan attorneys Erika H. Arner and Joshua L. Goldberg provide insight into how lawyers can better equip themselves to adjust to these changes and prepare for appeals before the Board.