Klemchuk Kubasta LLP Partner Kirby Drake Presents at State Bar of Texas Advanced Intellectual Property Course

Kirby Drake presents Inter Partes Review- Learning from the Denied Petitions

Kirby Drake, partner at Klemchuk Kubasta LLP (KK LLP), a leading intellectual property (IP) law firm, recently presented to attendees of the 27th State Bar of Texas Advanced Intellectual Property Course in Dallas, Texas on March 20, 2014.

Drake addressed the details of Inter Partes Review (IPR), which is a proceeding that takes place in the U.S. Patent and Trademark Office to challenge issued patents on grounds of anticipation and/or obviousness based on patents or printed publications. Drake described the IPR petition requirements, and then she focused on many of the reasons that petitions are being denied based on her extensive analysis of the petition decisions that have been issued since September 2012 when IPR first was allowed pursuant to the America Invents Act (AIA). Finally, she provided several best practice considerations for potential IPR petitioners and patent owners faced with IPR petitions.

“Institution of an IPR petition is not as a matter of right,” said Drake. “The IPR petitioner needs to make sure they meet all the requirements when requesting IPR, and the patent owner should strongly consider filing the optional patent owner response because, of the over 50 petitions that have been denied in their entirety, in over 90% of those cases, the patent owner filed the response challenging the grounds of the IPR petition.”

Drake has previously presented to a variety of legal audiences on the AIA and its provisions, including the 26th Advanced Intellectual Property Law Course on pre-issuance or third party submissions. She also has written several articles on topics relevant to the AIA, including pre-issuance submissions, first-to-file procedures, inter partes review, and covered business method review.

”Kirby has been a fantastic resource to the local and state legal communities on the intricacies of the America Invents Act, said partner Shannon Bates. “She has significant experience on this subject, and has been involved in proceedings using these new laws that resulted in positive outcomes for our clients.”

About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differentlyand our local counselpractice. 

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