Partner – Litigation Practice Chair
John Skeriotis
Areas of Practice
Intellectual Property, Patent, Trademarks, Copyright, Internet Law, Litigation, Licensing
There are a number of resources available to you to challenge a patent that infringes on your own. The patent litigation attorneys on the Post-Grant Team at Emerson Thomson Bennett can evaluate your situation. We will provide you with a strategy that will place you in the best position to challenge the validity of a patent you believe is infringing on your own.
Alternatively, if you are faced with a challenge to the validity of your patent through Post-Grant proceedings, the ETB Post-Grant Team can help you defend your patent. ETB’s patent litigation attorneys are prepared to face the patent challenge and maintain the validity of your patented technology.
What Makes Our Patent Litigation Attorneys 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 trials where the patentability of one or more claims in a patent is reviewed. During this trial, one or more sides will defend the patentability of their patent, while others may claim that another’s patent infringes on theirs.
Litigations like these need to be staffed by registered patent litigation attorneys. You will receive one if you are in charge of defending your patent against invalidity or pursuing invalidity when you come to Emerson Thomson Bennett. Here, 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 another U.S. Patent.
An IPR can be requested nine months after the infringing patent has been issued. If it has been less than nine months, a Post-Grant Review can be requested instead.
Post-Grant Review
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 inequitable conduct, for example, (fraud on the Patent Office), a PGR is available.
A PGR’s timing requirements are different from that of an IPR. It can only be requested during the immediate nine months after it was issued. If the U.S. Patent has been issued for longer than nine months, a PGR is no longer available.
Covered Business Method Reviews
Business method patents had special post-grant proceedings available to them, called Covered Business Method (CBM) Reviews. A CBM Review would be requested against a business U.S. Patent for any ground of invalidity.
When this was available, there were no time constraints, but this option is no longer available, and was sunsetted as a procedure 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.
Contact the Patent Litigation Attorneys at Emerson Thomson Bennett for a 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 you need to defend against a Post-Grant Proceeding, our Post-Grant Team, led by our Top Litigation Partner, will provide aggressive legal representation. We will work to ensure that your patent is protected against challenges and infringement. Contact us today.
