Challenging Validity in the Patent Office: A Look Back at the First Year, and a Look Ahead to Post-Grant Review and Potential Statutory Changes

On September 16, 2012, a number of tools for challenging patents in the U.S. Patent Office became available, most notably, Inter Partes Review (IPR) and the Transitional Program for Covered Business Method Patents (CBM). Now, one year later, Karl Renner shares his observations and experiences regarding these tools in practice. Topics to be covered include a survey of who is using these tools, the apparent effectiveness of these tools, and their relationship with District Court litigation. Mr. Renner will also address the Post Grant Review (PGR) tool that recently became available, impactful changes being considered in proposed legislation, and practice tips for prospective patent owners and challengers.

Karl Renner is a Principal in the Washington, D.C. office of Fish & Richardson. Mr. Renner co-chairs the firm's Post Grant Practice Group, and he serves on the firm’s Management Committee. His practice emphasizes client counseling, strategic patent prosecution, contentious inter and ex parte post grant and reissue work, due diligence and freedom-to-operate investigations, and patent-related opinion work. In this practice, Mr. Renner has provided the strategic direction for well over 100 post grant matters, challenging and defending patents, most commonly in coordination with litigation counsel amidst co-pending disputes.