Post Grant Patent Practice

Business Solution Services Using USPTO Post Grant Review Procedures

One way Merchant & Gould assists clients in planning, defending and securing positive resolutions in intellectual property disputes includes strategic use of USPTO post grant review procedures, including patent reexamination, reissue, and interference, as well as trademark opposition and cancellation. We work with our clients to employ post grant procedures to strengthen our clients' patents and trademarks and challenge competitors' patents and trademarks in the most effective way.

As to patents, use of ex parte reexamination, inter partes reexamination, reissue and interference proceedings can avoid or reduce the cost of resolving patent disputes that would otherwise be the subject of protracted federal district court litigation. In some cases these Patent Office procedures can be used in advance of looming litigation. In other cases, these procedures can be employed during the litigation process to resolve critical issues bearing on patent infringement (e.g. claim scope and construction), patent validity (e.g. expert prior art evaluation) and patent ownership (e.g. priority of invention between competitors). Our attorneys have extensive expertise helping clients consider and employ post grant procedures as complements or alternatives to federal court litigation for resolving patent disputes.

Merchant & Gould attorneys have experience in handling post grant review procedures for patents in diverse industries and technologies including:

• Mechanical Engineering (e.g. underground storage tanks, construction and telecommunication equipment, air and liquid filter technology, lawn care and maintenance products, high security locks, window frames, and power tools)
  


• Software and DRM Applications (internet distribution to security encryption products)
  


• Chemistry and Chemical Engineering (photo-resists to pesticides and numerous other commercial processes)
  


• Biotechnology/Pharmaceutical and Therapeutic Products and Applications (e.g. protein engineering, molecular diagnostics and assays, antibodies, gene therapy, vaccines and immunomodulators)
  


• Consumer products, such as food products and
  


• Medical devices

Our firms' technical assistants provide a range of scientific and engineering expertise that enhances our discovery, assessment, application and/or distinguishing of prior art and inventive concepts. Our ability to team legal and technical resources leads to clear, effective and efficient communication of our clients' positions to Patent Office decision makers.

Importantly, we can provide appropriate risk assessment and cost/benefit analysis to determine whether a post grant procedure is the best way to achieve intended business goals. Our attorneys know when and how to communicate with courts during litigation proceedings as to, if and how, use of a post grant proceeding can better resolve a dispute and/or assist the court by staying the litigation process to obtain helpful patent office expertise bearing on complex issues such as claim construction and patent validity.

Merchant and Gould attorneys are ready to use post grant opposition when legislation provides for this additional post grant review procedure for patents. The Patent Reform Act before the United States Congress (Senate S-515; House Bill HR-1260) includes creation of an additional post grant opposition procedure. Opposition will provide an immediate post grant patent review alternative that is to some degree similar to opposition procedures in other countries. Opposition practice in the United States, however, is likely to include a number of procedures different from existing opposition practice in other countries, such as limited discovery. Merchant & Gould attorneys will build on the wealth of its experience in handling trademark oppositions and cancellations, as well as patent interferences and foreign opposition practice as it prepares for the likely addition of opposition practice to post grant patent procedures in the United States.

Strategic use of post grant review procedures exemplifies Merchant & Gould's commitment to finding the most cost effective solutions for our clients.

Brief descriptions of USPTO post grant review procedures for patents are provided below for general reference along with links to statutes governing patent reexamination procedures and articles by Merchant & Gould attorneys who handle post grant review proceedings for patents.

Reexamination is a proceeding that can be initiated at any time during the enforceability of a patent by any person filing a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have bearing on the patentability. In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. There are two types of reexamination proceedings:

• ex parte reexamination in which the request can be made by any person, but excludes a third party from participating in the ex parte proceedings beyond the filing of a reply to the patent owners statement under 37 CFR § 1.530, if the patent owner files a statement.
  


• inter partes reexamination is requested by a third party and allows the third party requestor to file written comments addressing issues raised by the patent owner in responses to office actions by the Patent Office.

Reissue is a Patent Office procedure involving surrender of an unexpired patent deemed to be wholly or partly inoperative or invalid due to errors that occurred without deceptive intent, and Patent Office review to address and correct defects in the patent.

Interference is a Patent Office proceeding to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents.

• Ex parte reexamination statutes (35 U.S.C. §§ 302-307)
  


• Inter partes reexamination statutes (35 U.S.C. §§ 311-318)
  


• The Power of Patent ReEXAMS: An underused weapon in the accused infringer's arsenal by Daniel W. McDonald, Vol. 1, Issue 1 of The Patent Lawyer
  


• Patent Enforcement: The Role of Reexamination by Alan W. Kowalchyk