Sean Reilly

is General Counsel of Askeladden and Senior Vice President and Associate General Counsel of The Clearing House Payments Company, where he directs intellectual property issues. He is a registered patent attorney whose principal responsibilities include advising members of The Clearing House’s senior business team on vital cybersecurity, intellectual property and technology law issues and transactions. Mr. Reilly coordinates with industry executives and senior lawyers from the nation’s leading banks on technology law issues and initiatives of concern to the financial services industry. Before joining The Clearing House, Mr. Reilly was in private practice and worked at the United States Patent and Trademark Office as a patent examiner.

Recent Articles by Is the Presumption of Validity Dead in Substitute Claims Issued as a Result of Motions to Amend After PTAB Proceedings?

Is the Presumption of Validity Dead in Substitute Claims Issued as a Result of Motions to Amend After PTAB Proceedings?

Since the Federal Circuit’s decision in Aqua Products, Inc. v. Matal confirmed that the burden of persuasion on a the patentability of amended claims in a motion to amend in an inter partes review proceeding (and presumably other post issuance PTAB proceedings) is placed on the petitioner, the theoretical rationale for Section 282(a)’s presumption of validity is no longer present for such amended claims.  872 F.3d 1290 (Fed. Cir. 2017) (en banc).  In particular, there is no government agency that is tasked with performing the inquisitorial examination that gave rise to the original presumption.  How can there be a presumption that the government agent charged with examining the patent claims did his or her job, when there is no such person assigned to perform that job?

The importance of PTAB patent review proceedings for addressing low quality patents

The availability of PTAB patent review proceedings to address low quality patents is especially important in the financial services sector where, prior to Federal Circuit’s decision in State Street Bank v. Signature Financial Group, there was a lack of emphasis on patenting financial services innovation. As a result, patent examiners, who regularly search issued patents and published patent applications for prior art, often may not have access to prior art they need to avoid issuing patents on previously known technologies.