Post-Grant Proceedings

With the leading patent litigation practice in the US within the same walls, our patent attorneys work alongside our litigators to incorporate the lessons that we learn in the courtroom into our patent strategies. This is especially true in our leading post-grant practice.

Inter Partes Review

The America Invents Act (AIA) created inter partes review (IPR), which allows a third party to challenge the validity of patent claims based on patents and printed publications. A petition for inter partes review only be based on the grounds of anticipation (35 U.S.C. §102) and obviousness (35 U.S.C. §103), and only after nine months of issuance and have a priority date after March 16, 2013.

Ex Parte Reexamination

An ex parte reexamination allows a third-party to request the reexamination of an issued U.S. patent based on prior patents or printed publications with the Patent Trial and Appeal Board

Covered Business Method Review

A person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent. A covered business method review may be requested except during the period in which a petition for post-grant review could be filed, e.g., 9 months after the issuance of a patent that is subject to the first inventor-to-file provisions. The transitional review program is available for non-first-to-file patents, even within the first nine months of the grant of such patents.