Ex Parte Reexamination, Inter Partes Review, Covered Business Method Review, and Other Post-Grant Patent Office Proceedings

It’s critical that your IP attorneys understand the America Invents Act (AIA).

Whether you are a plaintiff or a defendant in patent litigation, your intellectual property attorneys must fully understand the nuances associated with pursuing post-grant review of patents before the U.S. Patent and Trademark Office – particularly in light of changes brought about by the America Invents Act (AIA). The AIA, enacted September 16, 2011, provided a host of new procedures for those wanting to challenge the validity of an issued patent. Among other things, the AIA established new proceedings at the Patent Office called inter partes reviews (which are applicable to any patent – subject to certain timing restrictions) and covered business method reviews (which can be used to challenge business method patents). The AIA also created a “supplemental examination” process at the Patent Office that patent holders themselves can use to address potential concerns with their patents prior to enforcing their patent rights.

Not only do these proceedings provide for the faster resolution of disputes, they also allow issues beyond patent validity under 35 USC §§ 102 and 103 to be resolved by the Patent Office. It is important to note, however, that while these post-grant proceedings are similar to patent reexaminations that have been available for many years at the Patent Office, they have several crucial differences which if not followed, can have terrible consequences. In particular, strict procedural rules must be followed carefully, and tight deadlines must be closely monitored and timely met.

With their strong technical backgrounds in the electronic, chemical, biotechnology, medical device, software, oil field technology, mechanical technology, and consumer product arts and their experience handling post-grant proceedings before the Patent Office and patent litigation in numerous jurisdictions throughout the country, Jackson Walker’s IP attorneys bring a unique combination of skills, experience, and resources to each matter.  Our attorneys have what it takes to maximize the success rate of our clients, both in enforcing our clients’ patent rights and in attacking the validity of patents asserted against our clients.

The members of our IP team persuasively advocate the legal and technical issues that are determinative to these post-grant proceedings – both independent of patent litigation and in conjunction with patent litigation. We have successfully established the necessary infrastructure within our firm with the crucial knowledge and experience to analyze each matter, develop a successful strategy, and then flexibly maneuver within the rigid timelines and rules for post-grant proceedings before the Patent Office in an effort to effectively and efficiently meet our clients’ goals.

Brian K. Buss

Partner, Houston

Brit Nelson

Partner, Houston

A Multi-Disciplinary, Flexible Approach

The strategies and issues for invalidating a patent are often very different from those required to defend patent rights in a post-grant proceeding. In the first instance, quickly adapting to the actions of the patent owner during the post-grant proceedings is critical. In the second instance, developing parallel courses of action for broadening the scope of protection is important. We know how to handle both instances. Simply put, our IP Group is made up of members with in-depth technical and practical experience across a broad range of technical disciplines and industry applications.

From patent prosecutors well-versed in cutting-edge technologies to experts in complex Patent Office proceedings to litigators with strong patent trial experience across the country, Jackson Walker’s attorneys can help you succeed in post-grant proceedings before the Patent Office. Whether you are challenging a patent being enforced against you or enforcing your patent rights against others, let us demonstrate how we can help you achieve your objectives.

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