Knobbe/Martens: Intellectual Property Law

USPTO Trials and Post-Grant Proceedings

We are one of the few firms that successfully handle a significant number of post-grant proceedings before the United States Patent and Trademark Office (USPTO).  

Our dedicated team of patent attorneys and paralegals have extensive experience that enables us to successfully manage and resolve Inter Partes Reviews (IPRs), Covered Business Method patent reviews (CBMs), Post Grant Reviews (PGRs), patent interferences, and derivation proceedings—from initial review by the USPTO Patent Trial and Appeal Board (PTAB) through final hearing by the US Court of Appeals for the Federal Circuit. Our USPTO-registered attorneys are involved in all aspects of these proceedings, regularly developing strategies that help our clients either utilize or avoid them.

Using our vitally important litigation skills and deep technical understanding, we proactively establish strong positions that, in many cases, prevent long and costly opposition.  Since the enactment of the America Invents Act (AIA) in September 2012, we have handled over 100 IPRs and CBMs, making us one of the top firms actively engaged in this practice area. And over the past two decades, we have handled some 30 patent interferences, which are similar in many respects to today’s post-grant proceedings.

Our expertise spans a wide range of technical disciplines, including molecular biology, genetics, semiconductor processing, computer software, and medical devices. We have leveraged both our technical and legal expertise to help our clients navigate the broad patent law changes introduced by the AIA—including the replacement of traditional inter partes reexaminations with new proceedings that more closely resemble litigation. Several of our attorneys served on USPTO committees that developed rules for these proceedings, giving us an intimate knowledge that has enabled us to provide the highest level of representation in post-grant proceedings.

USPTO Trials & Post-Grant Proceedings
  Post Grant Review Inter Partes Review Ex Parte Reexamination
Eligibility Any "First-to-File" patent Any issued patent Any issued patent
Timing Within 9 mos. of issuance "First-to-File" patents: Later of 9 mos. after issuance or conclusion of any PGR; "First-to-Invent" patents: After issuance Pending litigation: One year after complaint served After issuance
Available Challenges §§ 101, 102, 103, 112, including public use/ on sale §§ 102, 103; limited to printed publications §§ 102, 103; limited to printed publications
Initiation Threshold More likely than not that at least one claim is unpatentable Reasonable likelihood that petitioner will prevail on at least one challenged claim Substantial new question of patentability
Petitioner/ Requestor Participation Active in all stages Active in all stages Initial Request only (may reply to Patent Owner's Statement, if filed)
Discovery Depositions and documents Depositions and documents None
Decision Maker USPTO PTAB (3 APJ panel) USPTO PTAB (3 APJ panel) Central Reexamination Unit (3 patent examiners)
Duration 1-1½ years from Petition 1-1½ years from Petition 1-3 years from Request
Estoppel Grounds raised or could have been raised Grounds raised or could have been raised None
Appeal Either party may appeal to the Fed. Cir. Either party may appeal to the Fed. Cir. Patent Owner may appeal to the USPTO PTAB and thereafter to the Fed. Cir.
Anonymity No No Yes

 

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