Post Grant Proceedings

Aside from litigation before the federal district courts, the validity of granted U.S. patents may be challenged before the U.S. Patent and Trademark Office. Post grant proceedings are in fact a changing and vibrant area of patent law, as the America Invents Act (AIA) has changed the landscape for such post grant challenges. Following AIA, the collection of post grant proceedings used to effect patent validity challenges comprises Ex Parte Reexamination, Inter Partes Reexamination (phased out on September 15, 2012), Post-Grant Review, Inter Partes Review and Supplemental Examination.

Traditionally avoided by litigation defendants, on the theory that post grant submissions of prior art could strengthen patent validity once withstanding such a challenge, today post grant proceedings have become an effective tool for defendants. Conversely, patent enforcers without expertise in post grant proceedings may find their litigations stayed, and their ability to pursue infringers significantly curtailed or entirely lost. Concurrently dealing with the differing notions of validity and status of patent claims before the U.S. Patent and Trademark Office, during post grant proceedings, and before a federal district court in a pending litigation, present a challenge to even the most highly skilled of patent litigators.

It is for these reasons that our prodigious knowledge and proficiency in post grant proceedings is vital in high stakes patent litigations. Our collaborative IP practice provides our post grant proceedings teams with the expertise needed to handle matters across multiple industries, including Biotechnology, Chemical, Clean and Green Technology, Communications, Electronic and Information Technology, Medical Devices and Instrumentation, Nanotechnology and Pharmaceuticals. Our post grant teams are often skilled litigators and prosecutors themselves, and are adept at drawing upon our pool of talented scientists and engineers to create sound strategies for every occasion.

Trademarks may be challenged before the U.S. Patent and Trademark Office as well. Under the Lanham Act, parties who may be damaged by the actual or proposed registration of a trademark may be entitled to challenge the registration. If the mark has been published for proposed registration on the Principal Register, the party can oppose the registration, in a writing filed following the proposed mark’s publication in the Official Gazette. IPLL’s trademark counsel and litigators are adept at opposition proceedings, having successfully challenged and defended many opposition proceedings over their expansive careers.