The article discusses that the passage of the America Invents Act and the post-grant proceedings it created to challenge patents has had an impact on patent prosecution. The proceedings force inventors to take a hard look at ways to draft new patents that can survive review at the Patent Trial and Appeal Board.
In the article, Shah discusses the importance of thorough prior art searches and precise claim terms. “Many times, PTAB decisions turn on the issue of whether the invention would have been obvious at the time of the invention. “If it's strategically important, you’re going to want to roll up your sleeves and understand the state of the prior art so that you can draft a better, more robust specification.”
Shah is co-chair of post grant proceedings at Brooks Kushman and serves as the firm’s chief diversity officer. Her practice primarily focuses on post-grant challenges and patent opinions. She represents several Fortune 500 clients, providing strategic counseling and guidance on their global IP portfolios.
The full article can be found on the Law360 website here.