In the Press
April 24, 2024

How Briefings Shakeup Could Shape PTAB Arguments (Managing Intellectual Property)

Professionals

A proposed USPTO rule package could allow lawyers to develop stronger arguments when filings petitions at the Patent Trial and Appeal Board but could make things more challenging for lawyers who advise patent owners. Lori Gordon, Intellectual Property partner in Washington DC, says addressing discretionary denial issues in a petition uses up a significant portion of the word count. She notes that she does a lot of work for petitioners and that creating separate briefing categories will help companies develop their arguments. "A lot of patents that are being challenged are very technically sophisticated and trying to educate the board and make your arguments in 14,000 words is difficult." Gordon, who has represented patent owners but tends to advise challengers these days, notes that patent owners will also have more word count to address the merits of petitions. More in Managing Intellectual Property.