The passage of the America Invents Act (AIA) in 2011 brought significant changes to post-grant procedures, the means by which a company can challenge a competitor’s patent before the U.S. Patent and Trademark Office (USPTO). The AIA established the Patent Trial and Appeal Board (PTAB) and created several new avenues for challenging patents. These procedures are an alternative or supplement to litigation, and can provide a swift and efficient way to resolve a patent dispute. Our lawyers have the expertise and extensive knowledge of the USPTO to guide our clients through patent disputes in this new and still evolving legal environment.

Challenging and Strengthening Patents: Options Before the USPTO

The USPTO provides multiple options for challenging and strengthening patents:

• Patent challengers can choose post-grant review (PGR), inter partes review (IPR), and ex parte reexamination

• Patent holders can seek to strengthen an existing patent via a supplemental examination, a reissue application, or an ex parte reexamination

To learn more about these different options, read our PTAB Proceedings Q&A below.

Our Experienced Patent Office Practice Team

We draw on our deep knowledge of patent law and wide-ranging IP dispute resolution experience to successfully represent our clients in PTAB proceedings. Our lawyers have extensive experience with IPRs and PGRs, as well as ex parte reexamination. Members of our team were among the first lawyers to represent clients in IPRs and PGRs when they became available. Our lawyers have been involved in over a hundred proceedings, representing both petitioners and patent owners in some of the highest-profile, complicated proceedings to date.

In addition, our team has also handled parallel litigation outside of the USPTO and has a strong track record of successfully coordinating such litigation with corresponding post-grant procedures under an overarching litigation strategy.

Recognition For Our Patent Office Practice

• Our practice vice-chair, Naveen Modi, has been recognized as the PTAB Bar Association’s interim vice-president.

• Practice vice-chair Naveen Modi named Outstanding IP Litigator of the Year – PTAB by Managing IP.