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Post Grant Proceedings

U.S. law makes it attractive to attack patents at the Patent Office. Merchant & Gould has a mix of litigators and prosecutors that take advantage of these options for clients.

Recent changes in U.S. patent law have made it much more attractive to attack patents at the U.S. Patent and Trademark Office (PTO) instead of the courts, even when litigation has already begun. Because Merchant & Gould has a deep bench of both patent litigators and specialists admitted to practice before the PTO, the firm is uniquely positioned to take advantage of these new options to the benefit of its clients.

Merchant & Gould has successfully attacked many patents at the PTO in recent years. Many of these attacks were on behalf of clients sued for infringing the patents. Instead of facing multi-million dollar damages claims or expensive litigation, clients saw their lawsuits brought to a halt or favourably settled or resolved. We even secured a multi-million dollar payment from the patent owner to our client due in large part to a successful attack of the competitor’s patent at the PTO.

We have also successfully defended our client’s patents against challenges at the PTO. Patents that survive a reexamination challenge emerge stronger than ever, enabling our clients to successfully enforce their patent rights.

PTO procedures include traditional ex parte and inter partes re-examination, as well as new review procedures made available by the America Invents Act such as inter partes review and covered business method procedures. These new procedures are particularly well suited to patents enforced by Non Practicing Entities or Patent Assertion Entities, some of which are sometimes referred to as “patent trolls.” We also have experience with traditional interference procedures that are precursors to some of the new procedures including the new derivation procedure.

Merchant & Gould attorneys are also well-versed in trademark opposition and cancellation procedures. We work with our clients to employ procedures to strengthen our clients’ patents and trademarks and challenge competitors’ patents and trademarks in the most effective way.

PTO challenges to patents can help to avoid or reduce the cost of litigation. In some cases these PTO procedures can be used before litigation begins. In other cases, these procedures can be used during litigation. Even if the process does not invalidate the patent entirely, in almost every case our clients have benefited from the process because it also efficiently resolves critical issues bearing on patent infringement and assists in supporting other defenses. Our attorneys have extensive experience helping clients consider and employ these procedures as complements or alternatives to federal court litigation for resolving patent disputes in the right situations.

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 telecommunications systems (e.g., e-commerce, messaging systems, and 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 home organizers, and
Medical devices such as telehealth systems

Successful Post Grant Procedures Undertaken by Merchant & Gould

Our firm’s attorneys and technical staff have a broad range of scientific and engineering experience. Our ability to team court, PTO, legal and technical resources leads to optimized strategy and results in all forums.

Other Resources

Below please find helpful resources related to these strategies including:

Brief descriptions of USPTO post grant review procedures for patents
Links to statutes governing patent reexamination procedures
Links to articles by Merchant & Gould attorneys who handle post grant review proceedings for patents.

Available procedures

Ex Parte 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. In this type of proceeding, a 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.

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.

Inter Partes Review is a trial-like proceeding that allows any third party to challenge the enforceability of patent claims by filing a request for the USPTO to conduct further examination of specified claims of the patent on the basis of prior art patents and printed publications. In order for the request to be granted, a reasonable likelihood that at least one challenged claim would be found invalid has to exist. The patent owner will have a chance to narrow the claims of his/her patent, while the patent challenger can then serve discovery and file motions directed to these validity issues. An inter partes review proceeding has to be initiated by a third party within a year of being named in a lawsuit. This procedure in part replaces the former inter partes reexamination process, which is no longer available for new challenges, although pending reexaminations will continue.

Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on a broad array of grounds, including indefiniteness and enablement. In many ways other than the scope of the review, post grant review is expected to operate much like inter partes review with respect to time limits, availability of discovery and claim amendment, and other issues.

Covered Business Method Proceedings are trial-like proceedings that allows a named defendant in a lawsuit relating to a business method to challenge the enforceability of patent claims by filing a request for the USPTO to conduct further examination of specified claims of the patent. In order for the request to be granted, a reasonable likelihood that at least one challenged claim would be found invalid. The Covered Business Method proceedings can be brought at any time by a named defendant if the patent in question does not describe a “technological invention” but once instantiated generally follows similar procedures to those involved in inter partes review.

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. Interference proceedings remain available for any patents having an effective filing date prior to March 16, 2013.

Derivation proceedings take the place of interference proceedings for applications filed on or after March 16, 2013, and are a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Post Grant Proceedings Practice Group Chair, Andrew J. Lagatta