John Serio and Joseph Walker Published in BNA Life Sciences Law & Industry Report
"Preserving the Strength and Presumed Validity of Patents: Implications of Microsoft Corp. v. i4i Limited Partnership for Life Sciences"

Seyfarth Shaw Intellectual Property Litigation attorneys John Serio and Joseph Walker wrote an article published in BNA's Life Sciences Law & Industry Report on September 9. The article discussed the Supreme Court's decision in Microsoft Corp. v. i4i Ltd. Partnership, and its effect on patent owners, particularly in the life sciences industry, which relies heavily on patents due to high research costs, which require longer periods of exclusivity in order to become profitable.

Defending a "decades-old precedent" that those challenging a patent's validity must prove the invalidity defense by showing clear and convincing evidence, the Supreme Court decision maintained that Section 282 of the Patent Act of 1952, which states "a patent shall be presumed valid" and "the burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity," Congress specified the applicable standard of proof. However, the Supreme Court indicated that evidence not previously considered by the U.S. Patent and Trademark Office (USPTO) may be introduced and weighed differently by the jury, potentially making it easier for those attempting to invalidate a patent to produce clear and convincing evidence for those challenging a patent.

John and Joseph advise, "inventors should take note of this proposition," and recommend searching for additional information and filing information disclosure statements listing several references with the USPTO, which will strengthen their patent when challenged.