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August 05, 2015


So if I've got a biotech patent in which hundreds of references were cited, I've got an effectively insurmountable burden if I want to amend my claims during IPR (or, presumably, PGR), unless I have an infinite budget and an army of low-cost scientists to review every reference. Ouch.

Based on this decision, it seems that if I'm monitoring a competitor's application and I see that not much is being cited, I should try to get as much art on the record as possible, even if only of marginal relevance, because when I go to challenge that application after it's issued, in an IPR or PGR, using good references instead of marginal ones, the patentee will need to relate to that marginal art if the patentee tries to amend its claims during post-grant proceedings.

If I've overlooked something, I'm sure this blog's readership will let me know.

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