Michael Bednarek, a partner in the  Intellectual Property Group of the firms Washington, D.C. office, spoke with InsideCounsel regarding the biggest factors currently reshaping in-house intellectual property practice, including the America Invents Act (AIA) passed in September 2011. “We’re headed into a new strategic paradigm where the U.S. Patent and Trademark Office (USPTO) plays a greater role in resolving patent issues, but it will take years, if not decades, to sort through what it means in terms of strategy,” said Bednarek, a former patent examiner who maintains an intimate familiarity with PTO procedures. “When this act is totally implemented, you’ll see the patent office issuing higher quality patents. Under the AIA, they’re increasingly able to partner with stakeholders, take outside submissions, allow the patent holders themselves to clean up problems that occur through supplemental examination, and then provide a forum—through post-grant review or inter partes review—where people can very quickly receive a high-level review.” He added “In the past it was probably sound practice to effectively put your head in the sand and wait until you were sued because you didn’t want to be accused of having knowledge of a patent and being a willful infringer. Even if you became aware of someone else’s patent application, there was little you could do to stop it. That is changing in a dramatic way because of the AIA. The lesson for companies is to be more proactive.”

The article, titled, “The Global IP Battlefield,” was published in the January 2012 issue of InsideCounsel.  Click here for a copy of the article:  http://www.insidecounsel.com/2011/12/20/extended-version-the-global-ip-battlefield