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Tom Engellenner

, partner at Nelson Mullins, has more than 30 years of experience in prosecuting and litigating patents. His practice includes patents, licensing, trademarks, copyrights and litigation, with particular experience in the fields of biotechnology, pharmaceuticals, analytical instruments and medical devices. More recently, his practice has expanded to also include post-grant proceedings at the U.S. Patent Office. Engellenner is based in Boston, Mass.

For more information or to contact Tom, please visit his Firm Profile Page.

Recent Articles by Tom Engellenner

Case Law and Policy Changes in PTAB Practice During 2019

Despite the possibility that the judges of the Patent Trial and Appeal Board (PTAB) may have been unconstitutionally appointed, as held recently by a Federal Circuit panel, it is hard to imagine the Federal Circuit (or the Supreme Court) throwing out nearly a decade of USPTO policies and PTAB jurisprudence relating to administrative patent trials under the 2011 America Invents Act (AIA). Stay tuned for a probable en banc rehearing of the Arthrex decision in 2020. That being said, a lot happened at the PTAB in 2019. Early in 2019, the PTAB designated as “precedential” an opinion in the Lectrosonics case explicitly adopting the practice called for by the Federal Circuit in the 2017 Aqua Products case of placing the responsibility on the petitioner who challenges a patent to also show that any amendments presented by the patent owner are also invalid. This was followed by proposed formal rules in October 2019 codifying the Lectrosonics holding that the petitioner who initiates a patent challenge will not only have the burden of persuading the PTAB that a patent owner’s claims as issued are invalid but will also have the same burden with regard to claim amendments during the proceeding. The USPTO should finalize this rule shortly.