Dunlap Codding Director Jordan A. Sigale Quoted in Law 360 on 5 Times NOT To File An AIA Petition
On November 17, Erin Coe wrote, “5 Times NOT To File An AIA Petition.” Coe said, “The America Invents Act reviews have emerged as an effective tool for attacking patents, but they may not always be the best response when a company is targeted in an infringement suit.” Dunlap Codding Director Jordan Sigale opined on two of the five times. Discussing when the PTAB isn’t the superior forum, he said, “When the prior art and the patent claims are close to each other, defendants may have an easier time before a judge or jury than before administrative law judges at the PTAB who are usually long-time patent examiners.”
Regarding the fifth time not to file an AIA petition—when prior art can lead to amendments—Sigale noted that, “Going forward, accused infringers are going to have to look more carefully at whether their prior art references could help patent owners bolster their patents….There’s a possibility that they can amend their patent at the PTAB, and that doesn’t exist in court.”