Practice Tips for Patent Owners With Patents Subject to Reexamination – Part I
Matthew Phillips
5/16/2012

Summary:

In the first of two segments published by IP Today, Stoel Rives attorney Kevin Laurence and co-author Matthew Phillips provide 10 practice tips to patent owners with patents subject to reexamination. These consist of the following:

• Get an early start
• Carefully consider not filing a patent owner's statement
• Make the record complete when responding to the first office action
• Preserve challenge to the order granting reexamination
• Interview the examiners
• Show a nexus to commercial success
• Consider not responding to an office action in inter partes reexamination
• Know when and how to petition in inter partes reexamination
• Think about the possibility of a reexamination when negotiating a protective order
• If litigation is stayed, ask the court to attach strings

Read the full discussion of these practice tips.

"Top 20 Practice Tips for Patent Owners in Reexamination Part I" was published by IP Today, May 2012.