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SKGF Publishes First In-Depth Analysis of Patent Reexamination in the Biotechnology, Chemical, and Pharmaceutical Industries
January 13th, 2010
Washington, DC-based intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. (SKGF) has published the first paper to provide an in-depth analysis of patent reexamination in the biotechnology, chemical, and pharmaceutical industries, an increasingly significant patent enforcement source and rapidly developing area of patent litigation practice. Reexamination Practice of Biotech/Pharma Patents in Group Art Unit 3991 provides the first detailed analysis on what is happening to patents being reexamined within this unit of the United States Patent & Trademark Office (USPTO). The analysis is based on a comprehensive review of over 800 reexamination proceedings from 1999 through 2009 involving biotech and pharmaceutical patents in which detailed data was extracted from file histories. Examples of data collected include identifying all FDA products associated with Orange Book patents undergoing reexamination, use of affidavits, grounds for rejections, and even the size of reexamination requests. This paper will be part of the course materials for the upcoming 5th Annual Advanced Patent Law Institute on January 21-22, 2010 at the USPTO. “We are pleased to provide cutting edge data and analysis on this important developing area of patent reexamination,” said Robert Greene Sterne, founding director of SKGF, paper co-author, and recognized expert on patent reexaminations. “Previously unavailable, this data and our analysis confirms what we have known anecdotally: patent reexamination has entered these areas of technology as a potent source of power in patent enforcement.” Gaby L. Longsworth, Ph.D., SKGF director, paper co-author, and an expert in the biotech and pharma areas of patent law observed, “In the past, patent reexamination was not an issue for the biotech and pharmaceutical industries; however, our paper shows how trends are changing. Biotech and pharma companies need to be on top of these critical developments in patent reexamination practice.” The third co-author and SKGF associate Scott M. Woodhouse, Ph.D., noted “As someone who is regularly involved in executing patent reexaminations in these technical areas, I was surprised about the rapidity of change. I urge trusted advisors and litigators to carefully review and digest our reexamination data and analysis as they make important enforcement decisions.” Download the full paper here: Reexamination Practice of Biotech/Pharma Patents in Group Art Unit 3991
