Richard Gilly Quoted in Medical Device Daily
"Patent reform will drive more global searches for prior art"

Seyfarth Shaw Washington, D.C. partner Richard Gilly was extensively quoted in Medical Device Daily on October 25. The article discussed patent reform legislation, including the America Invents Act, and strategy for small device makers to secure their rights.

"I don't see a huge change other than that they're going to work to get the maximum amount of detail in their first filing," said Richard.

The article discusses what now constitutes "prior art," practices for searching for prior art and the post-grant opposition feature of the America Invents Act (H.R. 1249). Richard said, "you can bring evidence of a public use, sale or commercialization to invalidate a patent within nine months of issuance from anywhere in the world as a basis for invalidating a patent, but because it's going to be harder for U.S. companies to know about those activities, you may see a greater percentage of patents invalidated through these administrative proceedings, because "there's more prior art that can be used in those proceedings."

Richard believes the Patent and Trademark Office's (PTO) intent to set a higher bar is there, and he points out that H.R. 1249's provision calls for a new administrative review board -- the Patent Trial and Appeal Board -- where the maximum length of time for inter partes reexamination is one year and extendable by six months. He says the advantage to having the new board is that litigation will be reviewed more than in traditional proceedings and will not have the examiner involved the way the Board of Patent Appeals and Interference does, so there will be less of a chance for vested interests during the proceedings.

"Some believe there's an institutional desire to uphold the PTO's work the first time around," said Richard.