Leydig, Voit & Mayer, LTD. Intellectual Property Law

Post Grant Proceedings in the U.S. Patent and Trademark Office

The America Invents Act (AIA), which took effect on September 16, 2012,  implemented significant changes in post-grant proceedings in the U.S. Patent and Trademark Office. These newly available proceedings provide a path to reduce the time and expense associated with patent litigation. The current and upcoming post-grant proceedings provide a number of valuable tools to maintain our clients' competitive edge: 

  • Ex Parte Reexamination: conducted before Patent Examiners, ex parte reexamination remains essentially unchanged by the AIA and permits challenges of patent validity using patents and printed publications.
  • Inter Partes Review: conducted before the Patent Trial and Appeals Board (PTAB), inter partes review is a new trial proceeding that replaces inter partes reexamination and permits challenges of patent validity more broadly than ex parte reexamination using a variety of evidence, including patents, printed publications, prior sales and other public information.
  • Post Grant Review: conducted before the PTAB and available during a 9-month period after patent issuance, post grant review is a new trial proceeding which permits challenges of patent validity on any grounds for patents having an effective filing date on or after March 16, 2013.
  • Supplemental Examination: conducted before Patent Examiners, supplemental examination permits an applicant to correct certain defects in patent enforceability prior to litigation, and afford statutory immunity from inequitable conduct charges.
  • Patent Reissuance: conducted before Patent Examiners, patent reissue remains substantially unchanged post-AIA and allows a patent owner to broaden the scope of an issued patent for two years after grant and to narrow the scope of the patent claims throughout the life of the patent.
  • Covered Business Method Patent Reviews: conducted before the PTAB and available until September 16, 2020, these reviews are limited to patents directed to business methods, regardless of their effective filing date, in a process similar to Post Grant Review.
  • Derivation Proceeding: conducted before the PTAB and available for a one-year period following publication of a patent application, derivation proceedings will ultimately replace interference proceedings and permit challenges of patent validity for a non-inventor who derived the claimed invention from the inventor and applied for a patent without the inventor’s authorization.
  • Interference Proceedings: procedurally unchanged by AIA, the first-to-file aspect of the AIA will eventually eliminate interference proceedings, but they will continue to apply to any patents having an effective filing date prior to March 16, 2013, to resolve priority contests between inventors applying for the same invention.

The short and long-term strategies for strengthening and challenging issued patents in the post-AIA world have become even more complex, requiring clients to work with experienced, respected advisors to develop comprehensive patent strategies. As one of the countries’ leading intellectual property law firms, Leydig offers experienced patent lawyers and seasoned litigators, registered to practice before the U.S. Patent Office, with the specialized knowledge and experience in litigation, patent prosecution, reexamination, interference and corresponding European opposition practice to help our clients navigate post grant proceedings and parallel litigations.

Leydig approaches post-grant proceedings as part of our clients’ comprehensive IP strategies, including patent portfolio review and management, patent enforcement, litigation, and licensing. Our attorneys have extensive experience with claim construction proceedings, discovery and trial practice, patent prosecution, and counseling, all of which can enhance our clients’ post-grant strategies. Our attorneys also help shape Patent Office rules and regulations by serving on rule-making committees, and they regularly receive recognition from Chambers, iam, U.S. News and World Report, Leading Lawyers and Super Lawyers for their skill in representing clients before the U.S. Patent Office.

Our proven track record in post grant proceedings and parallel litigations includes:

  • Handling more than 125 reexaminations, 100 interferences, 150 reissues, and 110 European patent oppositions.
  • Handling some of the first-ever filed inter partes reviews filed after September 16, 2012, as well as our involvement with other proceedings since then.
  • Using the new inter partes review proceedings to favorably settle several litigations for our clients.
  • Developing a coordinated strategy in litigation and post-grant proceedings to settle patent infringement lawsuits against our clients.
  • Using the patent office reexamination proceedings to invalidate a patent after a jury awarded nearly $1,000,000,000 in patent infringement damages against one of our clients.
  • After a district court found our client’s patent claims infringed by a competitor, using the Patent Office reexamination proceedings to confirm the validity of the patent claims and overcome unfounded allegations of inequitable conduct.
  • Using interference proceedings to secure patents or market access for our clients.