Post Grant Proceedings
Overview
A strong patent portfolio is achieved by more than just the issuance of patents. Rather, patent protection must often be maintained at the United States Patent and Trademark Office (USPTO), where patents are regularly challenged and defended in post grant proceedings before the Patent Trial and Appeal Board (PTAB).
Meunier Carlin & Curfman represents patent owners and challengers in post grant proceedings as defined by the American Invents Act (AIA) of 2011. These proceedings, which take place after the grant of a patent, allow for the challenge and defense of patentability claims and are often initiated before the PTAB in parallel with patent litigation that we manage in federal district courts.
Our post grant team is a unique combination of our nationally regarded patent prosecution team and our experienced litigation practice, which has led appeals before multiple circuit courts of appeals, the Federal Circuit, and the U.S. Supreme Court. Our litigators bring important experience to the table, since post grant proceedings contain many features of litigation, with limited discovery options, the availability of sanctions, and mechanisms for settlement between parties.
Combining Technical Expertise and Litigation Experience to Maximize Success
Having handled almost 40 cases before the PTAB with this core team of patent attorneys and litigators, we understand well the PTAB’s processes, procedures, and pitfalls. Our approach is designed to maximize success for our clients by pairing an attorney or agent who is a technology expert with a seasoned litigator in order to bring an exceptional mix and depth of experience to our clients’ matters.
For each post grant engagement, we assign attorneys and professionals who have the technical experience required to understand our clients’ patent issues and to express esoteric technical concepts. This approach is the standard at our firm, where all our patent attorneys and agents hold advanced technical degrees and have worked as university scientists and researchers, as in-house IP counsel, as USPTO examiners, or as corporate scientists and engineers.
We counsel and guide our clients through the PTAB process, helping them with considerations such as analyzing threshold requirements, determining the best time to file a petition, assessing grounds to assert invalidity, and working through discovery options.
Our work includes:
Inter Partes Reviews (IPR) – an alternative to litigating patent validity in federal courts which is limited to validity challenges based on published references. Challengers fully participate in the trial process before a panel of administrative law judges from the PTAB, and the review proceedings allow for discovery by the parties.
Post Grant Reviews (PGR) – unlike IPR proceedings, PGR proceedings allow validity challenges based on any ground that can be litigated in federal court. PGR petitions can only be filed on patent applications that are subject to the America Invents Act rules and must be filed within nine months from a patent grant or reissue.
Ex Parte Reexaminations – a method for a challenger to challenge a patent using patents or other printed publications. The patent owner can also file an ex parte reexamination to have its patent reconsidered.
Reissue Proceedings – actions to correct an error in a patent which, due to the error, may be considered “wholly or partly inoperative or invalid.” Errors include claims that are too narrow or too broad, a disclosure that contains inaccuracies, a defective priority claim, and a defective specification. The patent owner can file a reissue to have a patent reconsidered based on any aspect of patentability.
Supplemental Examinations – a method for patent owners to have the USPTO reconsider a patent based on any information that could affect the validity of the patent. Supplemental examination can be filed at any point while the patent is enforceable.