A Quick Guide on Strategies for Success in a Post-Grant Review

Since the America Invents Act (AIA) came into effect, patent post-grant reviews have become a big deal. This review is one of the best ways to examine a patent after it’s been granted by the United States Patent and Trademark Office (USPTO). 

Between Sept 2012 and Sept 2023, petitioners challenged 10,363 patents under AIA. Out of these, the Patent Trial and Appeal Board (PTAB) partially invalidated 3,170 patents and fully invalidated 1,037 patents. This means over 40% of post-grant reviews have ended in a form of invalidation, which should alleviate concerns that the USPTO is biased for or against defendants or plaintiffs.

If you own a patent or want to challenge one, you need to know what this review is and how it works. As leading post-grant patent review lawyers, we are here to help. This quick guide will help you understand the strategies you need for a successful patent post-grant review. 

What is a Post-Grant Patent Review?

A post-grant review is a process where you can challenge a patent’s validity after it’s been issued. This proceeding has broader grounds for appeal, such as prior art. You can question the patent’s originality – whether it’s really new or just a copy of something else.

However, the process of a patent post-grant review has a few restrictions. For one, it applies only to patents with an effective filing date of March 16, 2013 or later. Secondly, you must file it within nine months of the patent’s issuance. If not, you will need to find other ways to challenge the patent, such as through an inter-partes review, or IPR.

Our qualified lawyers can help you handle this process meticulously. We can also help you with the necessary paperwork and legal knowledge.

3 Important Considerations for Petitioners

If you believe a newly granted patent infringes on one of your inventions or a prior art, you can file a petition for a post-grant review. However, as a petitioner, you will need to think about a few things first. Here’s what you need to keep in mind.

1. Conduct a Thorough Prior Art Search

First, check all the previous work (prior art) linked to the patent. If someone infringed on your patent or another’s patent, their inspiration can give them away and serve as a good place to start. This will help you determine if the patent is original. The more thorough your research is, the more confident you can be of a successful post-grant review for the patent.

2. Build a Strong Petition

Your petition needs to be foolproof. Don’t leave anything to chance. You need attorneys who can find evidence to back the team’s every argument or point. Evidence should include facts, proofs, and professional opinions. Your petition should clearly and persuasively explain why the patent shouldn’t have been granted.

3. Hire a Post-Grant Review Lawyer

Technically, you can file a petition on your own. However, it’s better to hire our skilled lawyer. We know patent law inside and out and can navigate the complex application process. Most importantly, we will offer strategic advice when you need it most.

3 Things Patent Owners Should Think About

If you are an owner, you need to defend your patent. You must make it foolproof so that a post-grant review board does not alter its status. Here’s what you can do.

1. Assess the Strength of Your Patent

Determine how secure your patent is. Look for any potential weaknesses or areas a challenger or competitor might target. Talk to a reliable intellectual property lawyer to address these shortcomings immediately. A thorough self-evaluation can be a game changer in protecting your invention.

2. Respond Effectively

Despite being careful, you might face a post-grant review for your patent. Don’t take these petitions lightly. It’s important to respond quickly with solid evidence while following the correct procedure, rules, and your patent’s standing.

Quick Practical Tips for Success in Post-Grant Review

It’s not easy to handle a post-grant review, whether you are a petitioner or the owner of the patent. You will need to be thoroughly prepared to handle the unexpected. Here’s what you can do.

1. Stay Informed

The America Invents Act (AIA), like the USPTO, has updated the country’s patent laws and procedures. Whether an owner or petitioner, stay on top of these latest developments. Staying informed helps you uphold your arguments effectively.

2. Maintain Open Communication

Communication is at the heart of any legal dispute. Keep the lines of dialogue open with the opposing party, whether you’re challenging a patent or defending one. Open communication can help you resolve issues without engaging in expensive, time-consuming legal battles. Who knows, you might be able to find a mutually beneficial solution.

Contact the Post-Grant Review Attorneys at ETB Law For Help

Winning a patent post-grant review requires experience in patent law that many other law firms don’t have. You will need to build a compelling argument based on solid evidence and use all your sources to stay informed of the latest changes to the patent law. And, of course, you want to consult a reliable lawyer. These simple strategies can mean all the difference in a post-grant review proceeding.

Are you looking for a post-grant review law firm? Look no further than Emerson Thomson Bennett. Since 1992, we have been protecting intellectual property rights for clients in the U.S. and worldwide. Contact us to learn how we can help you.