There are a number of resources available after a patent issues to challenge its validity. The Post-Grant Team at ETB can evaluate your situation and provide you with a strategy that will place you in the best position to challenge the validity. Alternatively, if you are faced with a challenge to the validity of your patent through a Post-Grant Proceeding, the ETB Post-Grant Team can help you defending the challenge to place your patent in a light most favorable to thwart the challenge and maintain the validity of your patented technology.
What Makes us Different?
Our Post-Grant Team is led by our Top Litigation Partner. Most, if not all, other patent law firms use only patent prosecutors or non-patent litigation associates in Post-Grant proceedings. Post-Grant proceedings are basically litigations and need to be staffed by registered patent litigation attorneys. You will not get a patent prosecuting attorney or an associate in charge of defending your patent against invalidity or pursuing invalidity.
At ETB, you get the best for your most important assets.
Inter Partes Review
An Inter Partes Review (IPR) is designed to allow a party to challenge the validity of a U.S. Patent through the U.S. Patent and Trademark Office (USPTO). Its benefits are touted as being efficient, more cost-effective than patent litigation, and will provide a result in one year from the date that the IPR is instituted. The IPR challenge is based upon patent or printed-publication prior art that a party believes invalidates one or more claims of the U.S. Patent.
An IPR can be requested beginning nine (9) months after the patent has issued. If less than nine (9) months, a Post-Grant Review can be requested.
A Post-Grant Review (PGR) is similar to an IPR as it is also designed to allow a party to challenge the validity of a U.S. Patent through the U.S. Patent and Trademark Office. One major difference between an IPR and a PGR is that the PGR is not limited to just prior art. If a party believes a U.S. Patent is invalid based upon, for example, inequitable conduct (fraud on the Patent Office), a PGR is available.
The PGR’s timing requirements are that it can only be requested up to nine (9) months after issuance. That is, if the U.S. Patent has issued for longer than nine (9) months, a PGR is no longer available.
Covered Business Method Reviews
Business method patents have a special post-grant proceeding available to them, called Covered Business Method (CBM) Reviews. A CBM Review can be requested against a business method U.S. Patent for any ground of invalidity.
There are no time limit constraints in requesting a CBM Review of a business method U.S. Patent, except that the procedure is currently slated to sunset in 2020.
Other Patent Challenges Through the USPTO
Third Party Pre-Issuance Submissions
Prior art submissions can be provided to the U.S. Patent and Trademark Office by a challenger who wants the office to review prior art while a patent application is pending in the U.S. This submission of prior art can be made anonymously. There are strategic decisions that must be made to determine if you should provide the USPTO with the prior art during the application process.
Ex Parte Reexamination
A much more cost-effective way to challenge a patent’s validity is Ex Parte Reexamination (Reexamination). Reexamination can be made anonymously by submitting prior art to the U.S. Patent and Trademark Office showing why the patent claims are invalid. While communication is limited between the challenger and the USPTO, a reexamination can be an effective and efficient way to invalidate a U.S. patent.
ETB Top Litigation Partner Coordinated Patent Review Strategy
Our depth of patent prosecution and patent litigation experience will provide you with a comprehensive and thorough review of which Post-Grant Proceeding is right for your particular situation. If defending against a Post-Grant Proceeding, our Post-Grant Team, led by our Top Litigation Partner, will provide aggressive legal representation to ensure that your factual and legal position places your patent in a light most favorable to upholding validity.