Practices

• Biotechnology
• Chemical & Materials Technologies
• Cleantech
• Electrical & Computer Technologies
• Interference
• Internet & Domain Names
• Licensing & Transactions
• Litigation
• Mechanical Technologies
• Nanotechnology
• Pharmaceutical
• Post Grant Proceedings
• Startups
• Trademark & Copyright

Services

• Alternative Dispute Resolution
• Copyright
• Due Diligence
• International
• IP Strategy
• Litigation
• Opinion
• Patent
• Trademark

Post Grant Proceedings

Group at a Glance

• 20 members
• Group combines vast experience in complex Patent Office proceedings, high-stakes patent litigation, and technology needed to prevail in Post Grant Proceedings.
• Group members have handled complex Patent Office proceedings, including reexaminations and interferences, in the areas of biotechnology, electronics, medical devices, software, mechanical technologies, and consumer products.
• Group members have extensive experience representing both patent owners and requesters, as well as distinct expertise in reexams having parallel litigation.

What Matters to Our Clients

We Understand the Changing World of Patent Reform

The America Invents Act (AIA), enacted September 11, 2011, ushered in new opportunities – and new risks – for those faced with an accusation of patent infringement or asserting a patent. The AIA provides incentives for more questions over the validity of issued patents to be resolved in the US Patent and Trademark Office (USPTO) rather than in district court.  Among other provisions, the AIA established new proceedings called “inter partes reviews” and “post grant reviews” along with a procedure to challenge business method patents. Also, a new “supplemental examination” process can provide significant benefits to patent holders needing to enforce their patent rights.

These new post grant proceedings retain elements of patent reexaminations that have been available for many years, but have notable procedural and substantive differences. They offer the promise of faster resolution of disputes and expand the range of issues that can be resolved by the USPTO. However, that speed and flexibility comes at the price of strict procedural rules and tighter deadlines, creating more pitfalls for those who choose these proceedings – or are forced by their opponents to use them. 

As an IP specialty firm, we provide a unique combination of skills, experience, and resources to maximize chances of success for our clients. Members of our Post Grant Proceedings Group have been successfully handling reexams, winning patent litigations, and excelling in interferences for many years. We have already honed the skills for persuasively presenting the technical/legal issues that will pervade these post grant proceedings.  Our group has developed strategies that are most successful under different situations and has built an infrastructure to support maneuvering within the rigid timelines and rules for responding to USPTO actions and submitting evidence.

Because a goal of these new post grant proceedings is to enhance the role of the USPTO in making decisions relating to high-impact patents, our long history and extensive experience working closely with the USPTO is invaluable.

Experience on Both Sides of Table

The challenges faced by a party seeking to invalidate a patent can be very different than those faced by a patent holder defending a post grant proceeding. Knowing how to both initiate and defend a reexam or other proceeding is a critical skill. 

For those requesting the USPTO invalidate a patent, we know how to initially build a case that will be persuasive to the USPTO. We also have the skills to adapt quickly to the responses by the patent owner which, unlike in litigation, can include changes to the patent. Moreover, as a firm with expertise in all areas of IP law, we can help early in the process by providing strategic guidance on whether the goal should be to narrow or invalidate a patent or even whether these post grant proceedings are right for the circumstances.

For clients defending a patent, our Post Grant Proceedings Group has the experience to create the best strategy to emerge from the proceeding with valuable patent rights. In addition to marshaling technical facts to support patentability, a patent owner may be faced with tough choices about amending the claims of the patent. Our vast experience building patent portfolios that generate value for businesses allows us to guide our clients through the crucial assessment of whether and how to amend claims in a post grant proceeding.

Strength Across Multiple Disciplines

Our Post Grant Proceedings Group is made up of members from a range of technical disciplines and industry knowledge. We bring together patent prosecutors at the cutting edge of a variety of technologies, experts in complex patent office proceedings, and litigators who help clients develop tactical litigation approaches. As a result, we can maximize a client’s chance of success in any of the post grant proceedings for patents in any technical area or covering any product or service.