• Your patent portfolio and <i>inter</i> partes review — are you watching your uspto correspondence addresses? you should
  • August 17, 2017 | Author: Charles W. Shifley
  • Law Firm: Banner & Witcoff, Ltd. - Chicago Office
  • February 28, 2017 — In past years, two things have happened at the same time. First, many corporations have merged. Larger corporations have bought out smaller corporations. Conglomerates have piled up purchases of diverse smaller corporations. Corporations have purchased patent portfolios, sold patent portfolios, taken outside patent prosecution in-house when patents issue, or in general, changed law firms for patent prosecution, sometimes several times in series. They have done all the things corporations do, such as splitting apart, going into bankruptcy reorganizations and doing hostile takeovers. And second, <i>inter partes</i> reviews (IPRs) have become a preferred way to cancel patents. For the unaware and not careful, the two can come into conflict and cost patent owners valuable rights. They shouldn’t, but in our experience they do. A simple watchfulness and set of ministerial actions would overcome the problem, but sometimes hasn’t. You should do better.