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New Patent Owner Filings Expected To Drive Down Reexams

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Alex Yap spoke with Law360 about the U.S. Patent and Trademark Office's new policy allowing patent owners to submit a 30-page...

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Alex Yap spoke with Law360 about the U.S. Patent and Trademark Office's new policy allowing patent owners to submit a 30-page response before ex parte reexamination is instituted. This change is expected to lower the historically high grant rate for reexamination requests, as patent owners can now present arguments against institution, giving examiners more insight into potential deficiencies. The policy shift comes amid broader USPTO efforts to limit America Invents Act reviews, resulting in increased reexamination requests.Read the <a href="https://www.law360.com/articles/2462917" target="_blank">full article</a>.

New Patent Owner Filings Expected To Drive Down Reexams

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Alex Yap co-chairs the firm’s Post-Grant Strategy + Disputes practice and is a member of Morrison Foerster’s IP Litigation practice. As a former administrative patent law judge at the U.S. Patent and Trademark Office (USPTO), he helps clients navigate post-grant adversarial proceedings before the PTAB. He focuses his practice on America Invents Act trials before the PTAB, as well as IP litigation matters.Prior to rejoining the firm, Alex served as an administrative patent judge at the USPTO in San Jose, California. In that capacity, he presided over more than 200 ex parte appeals, inter partes reviews, and covered business method patent proceedings.Utilizing his electrical and computer engineering degrees and experience from senior engineering roles, Alex spent 11 years at MoFo advising technology clients on patent litigations. During that time, he was involved in more than 30 USPTO reexamination/review proceedings and obtained cancellations of asserted claims in numerous cases.Prior to becoming a lawyer, Alex spent more than four years as a circuit design engineer for Freescale (formerly Motorola, Inc.) and Analog Devices, Inc., designing embedded non-volatile (flash) memories and asymmetric digital subscriber line chipsets. During that time, he developed extensive expertise in computer hardware and software architecture, communication systems, digital and analog circuit design, and digital signal processing. He has published numerous technical articles in trade journals and is an inventor on multiple U.S. patents.Alex received his B.S. and M.S. in electrical and computer engineering from the University of Wisconsin, Madison, in 1993 and 1998, respectively, and his J.D., magna cum laude, from the University of Minnesota Law School in 2005. He was an editor of The Minnesota Law Review and was elected to the Order of the Coif.Alex is a member of the California State Bar and is registered to practice before the USPTO. He is also a member of the American Association of Patent Judges.