However, if the grounds for review are strong, many times it will be to the Patent Owner’s advantage to have a bit more time to argue and determine patentable subject matter and to fight off as much of the asserted prior art as possible. In cases with strong grounds for review, the Patent Owner is likely starting from a deficit and good advocacy becomes critical. The depth of the dependent claims may save the day for the Patent Owner. And if the dependent claims fail, hopefully there is some depth to the disclosure to plumb that might still be commercially relevant and provide room for narrowing amendments.

As much as a Patent Owner may be besieged in these situations, the sobering countervailing concern for the Petitioner is that if the patent survives review (amended or not), it emerges stronger due to the practical and/or legal estoppel that attaches. If the Patent Owner had to narrow its claims to survive the review, these narrowed claims may be much harder to invalidate in any subsequent action, including other reviews and litigation. If the claims after review are still commercially valuable to the Patent Owner, that which does not kill the patent only makes it stronger. The upshot: even if armed with good challenges, potential patent challengers need to proceed thoughtfully because the Patent Owner may simply benefit from the review process.

Tim Bianchi ( From Reexamlink ,Nov ,2011 )

http://www.reexamlink.com/tag/tim-bianchi/

Schwegman, Lundberg & Woessner, P.A.