Practice Areas

Post Issuance And Third Party Practice Before The USPTO

Whether you are a patent holder or an accused infringer, over the past decade the role of third party and post-issuance practice before the U.S. Patent and Trademark Office has grown significantly. Reissue and reexamination practices have been used by patent holders to strengthen patents. In addition, Ex Parte and Inter Partes Reexaminations have provided a vehicle for accused infringers to challenge patent validity, and also to seek stay of concurrent litigation.

With the advent of the America Invents Act in September 2011, the role of post-issuance and third party proceedings becomes even more important. A number of new post-issuance proceedings, including Post-Grant Review, Inter Partes Review, Transitional Post-Grant Review for Covered Business Methods, and Supplemental Examination will all be available procedures as of September 2012. There are strategic benefits and risks for each of these procedures, particularly where there is parallel actual or potential litigation.

Now more than ever, it is extremely important to make sure that your representatives before the Patent Office are not only experienced patent practitioners licensed to practice before the Patent Office, but also have the litigation savvy necessary for the new form of adversarial proceedings and related strategic advice.

Our attorneys are prepared to assist you in pursuing the right strategy under the new procedures to get you results. Our firm offers the unique qualifications that only a top notch patent boutique can provide, attorneys with litigation and complex licensing experience, prosecution experience and deep technical skills. Our firm has over twenty attorneys who are registered to practice before the U.S. Patent and Trademark Office and over ninety percent of our attorneys have technical degrees. Our attorneys also have the significant trial and appellate experience that will be needed to win the new adversarial Post-Grant Review and Inter Partes Review proceedings.