Written by: Sunjeev S. Sikand
This article first appeared in the January 25, 2016 edition of IP Law360
 
A January 4, 2016 article in IP Law360 raised several issues regarding the USPTO’s handling of the December 2015 power outage, including the USPTO’s statutory authority to declare the power outage days as federal holidays and vulnerabilities of patents having bar dates on a power outage day but filed on the next succeeding business day.  Patentees can breathe a sigh of relief in at least one respect – future attacks on “power outage patents,” i.e., patents based on applications with a bar date on a USPTO power outage day, but filed on the first business day after the USPTO electronic filing system came back online, are highly unlikely.  In the 2008 Aristocrat decision, the Federal Circuit reiterated that “[p]rocedural lapses during examination, should they occur, do not provide grounds of invalidity.”[1]  Still, clarification of the USPTO’s statutory basis to declare the power outage patents as timely filed is needed to protect against several potential pitfalls.
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This article first appeared in the February 3, 2015 edition of the Legal Intelligencer
 
Inter partes review (IPR) is a powerful alternative or supplement to patent litigation that permits a party to challenge a patent’s validity before the Patent Trial and Appeal Board (PTAB). In fact, the concurrent use of IPR in connection with federal district court patent litigation has become so pervasive that many patent infringement litigants now consider IPRs to be a de facto counterpart to such litigation. From the accused infringer’s perspective, an IPR is an essential consideration and may be an integral part of a defense strategy. In that regard, a patentee must take into account how an IPR could derail its enforcement efforts.
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Valley Forge, PA | January 4, 2016 – RatnerPrestia is pleased to announce that its Munich, Germany office is now open. RP CEO, Jonathan H. Spadt, notes, “RP now has the ability to represent clients in the U.S., German and European Patent Offices, and seamlessly coordinate multi-jurisdictional litigation, invalidation proceedings, licensing and strategic planning in those same jurisdictions, with one team of expert lawyers all cooperating under one roof.”

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Washington, D.C. | December 2015 – RP Shareholder Brian P. O’Shaughnessy, who also serves as Regional Vice President, USA, of the Licensing Executives Society (USA & Canada), secured unanimous approval of three Board resolutions acknowledging and praising the work of the LES Public Policy Committee, and its Chair, Rachel Kreppel, Purdue Pharma.  The resolutions were passed at the regular LES board meeting at the Society’s Annual Meeting in New York City, in October. 

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Washington, D.C. | December 2015 – The Life Sciences Summit is being held December 1-2, 2015 in New York City.  Brian P. O’Shaughnessy, RatnerPrestia Shareholder and Public Policy & Regional Vice President, Licensing Executives Society (LES) will lead the presentation – “Contracts Are Forever: Positioning Your Assets”.  The panel will cover how to position your asset in a contract as well as the road-bumps and land-mines that have tripped up other companies that you need to be aware of.
The Life Sciences Summit is an early-stage investor and business development conference for emerging companies and academic innovators. The objective of the meeting is to connect emerging companies with early-stage investors, business development professionals, and medical research foundations with the goal of advancing new innovations into clinical development.

For more information about the event, click here.

     
 
Washington, D.C. | November 2015Sunjeev Sikand has co-authored a 29-page letter and report to the U.S. Patent and Trademark Office (USPTO) on behalf of the Intellectual Property Owners Association (IPO) in response to a request for public comments on the July 2015 Update to the Patent Subject Matter Eligibility Guidance. IPO said that the interpretation of the patent eligibility case law in the guidance diverged from the narrow holdings of the cases and the views of many commentators and stakeholders, which could lead examiners to reject unnecessarily applications that should be patent eligible. The letter also argued that the USPTO should consider evidence of non-preemption during its initial determination of patent eligibility and should make a detailed showing to support patent ineligibility rejections.

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Washington, D.C. | October 2015Sunjeev Sikand addressed the Board of Directors of Intellectual Property Owners Association (IPO) at the 2015 Annual Meeting. Mr. Sikand recommended that the IPO Board adopt positions on Patent Act Section 101 in response to the USPTO’s July 2015 Update to the Section 101 Eligibility Guidance.
The IPO Board is comprised of members from, among other companies, Qualcomm, Apple, Google, IBM, Siemens, and Hewlett-Packard. Each IPO Board member is a Chief Intellectual Property Counsel of a member company.

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Washington, D.C. | October 2015 – RatnerPrestia is pleased to announce that Wm Jackson Matney Jr. has joined its Washington, D.C. office as a Shareholder. RatnerPrestia Chief Executive Officer, Jonathan H. Spadt, notes, “We are particularly pleased with Jack’s extensive litigation experience. His pragmatic approach to resolving IP disputes will add to our growing stable of talented lawyers. And perhaps most importantly, his energy and talents will really mesh with our entire team of exceptional people.”

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Valley Forge, PA | October 2015 – RatnerPrestia Shareholder Brian P. O’Shaughnessy has been nominated as the next president-elect of the Licensing Executives Society (USA & Canada), Inc. (“LES”). O’Shaughnessy currently serves as LES Regional Vice President, USA. He has served on the LES Board of Trustees since 2007. As Regional Vice President, USA, he is responsible for formulating and articulating the Society’s position on legislation, administrative policy, and trends in IP law in the U.S.

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Valley Forge, PA | September 2015 – RatnerPrestia is pleased to announce that it is opening a Munich, Germany office on January 1, 2016.  RP CEO, Jonathan H. Spadt, notes, “This is an unprecedented move for a firm our size, and one we are undertaking with very specific goals in mind.   No IP law firm our size has done what we are doing.”
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