Arent Fox’s Post-Grant Proceedings practice group draws on the strength of its patent lawyers and litigators to strategically assist clients with reexaminations, reissues, supplemental examinations, and the new procedures under the America Invents Act to challenge the validity of issued patents using Post Grant Review, Inter-Partes Review and Covered Business Method procedures. The AIA of 2011 ushered in a number of new rules regarding how issued patents can be reviewed or challenged by the USPTO. These changes include, for example:
- As of September 16, 2012, Inter-Partes reexaminations are replaced by Inter-Partes Review.
- The Board of Patent Appeals and Interferences has been replaced with the Patent Trials and Appeals Board (PTAB) which utilizes administrative law judges to handle PGRs, IPRs, CBMs, and derivation proceedings.
- The new post-grant procedures such as PGRs and IPRs have expedited schedules by statute to conclude the review of patents in no later than 12-18 months.
- Post-grant procedures allow for limited discovery, document productions, depositions and trials on validity, with appeals taken directly to the US Court of Appeals for the Federal Circuit (the Federal Circuit).
- Post-grant procedures can be settled any time during the proceedings, allowing clients greater leverage when using the post-grant procedures when faced with litigation.
Arent Fox’s attorneys can assist clients in strategically planning for defensive patent litigation or to defend against attacks on the validity of their patents by carefully navigating these new rules and procedures. Brief summaries of these post-grant proceedings including both new and old procedures are discussed below.