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Media Coverage Articles

Fish's Tom Rozylowicz Quoted in Law360 Article, "4 Ways Patent Owners Mess Up At The PTAB"

April 14, 2016

Media Coverage Articles

Fish's Tom Rozylowicz Quoted in Law360 Article, "4 Ways Patent Owners Mess Up At The PTAB"

April 14, 2016

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Tom Rozylowicz (Washington, DC) was quoted in a Law360 article, “4 Ways Patent Owners Mess Up At The PTAB.” In order to prevent mistakes at the PTAB, it’s important to not wait to get the preliminary response pulled.

They Don’t File a Preliminary Response

“Although patent owners may have three months to file a preliminary response once a petition is filed, another mistake many make is they wait too long to start working on their response,” according to Thomas Rozylowicz, a principal at Fish & Richardson PC.

“If patent owners wait to pull together their preliminary response with one or two months to spare, they may have to take potential issues off the table because there is just not enough time,” he said.

“Oftentimes, petitioners submit records that fail to take advantage of the full record, one that would provide patent owners with a tactical advantage.”

“Preliminary responses are one of the best paths to secure the desired outcome, and the only one that avoids institution,” he said.

They Don’t Spend Enough Time Lining Up Evidence

“Patent owners also sometimes overlook a rich extrinsic record that can help bolster their arguments on patentability and secondary considerations as they relate to nonobviousness, such as open source literature, press releases, product reviews and market surveys,” according to Rozylowicz.

“That evidence can resonate with the board because it’s not generated by experts for the purpose of trial, rather it was generated for other purposes even though a patent owner may elect to use it in litigation,” he said.

They Ignore Alternatives to a Motion to Amend

“Reissues also should be considered and earlier in the process because it provides the only process where patent owners can amend claims as a matter of right,” according to Rozylowicz.

“Reissues are generally not a popular vehicle, but where a patent owner knows it faces a difficult fact pattern [at the PTAB], a reissue often represents a good approach for a patent owner to pursue a superior backup position.”

To read the entire article, click here.

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