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Post-Grant Proceedings

The America Invents Act of 2011 introduced a number of changes to post-grant proceedings. Among these changes, the AIA created the new Patent Trial and Appeal Board (PTAB) to replace the PTO Board of Patent Appeals and Interferences. In addition, the AIA significantly increased the opportunities for challenging or enhancing a patent via a PTO proceeding.

Although the changes to post-grant proceedings are relatively new, the attorneys at Boyle Fredrickson have already represented clients in front of the PTAB with favorable results.

  • Inter Partes Review (IPR) – IPR is a procedure to challenge the validity of patent claims based on patents and printed publications. It became available on September 16, 2012. Inter partes review can be initiated after the nine-month window of eligibility for post-grant review has expired. IPR offers several advantages, including faster resolution time of 12 – 18 months.

Case studies:

Dynamic Drinkware v. National Graphics

Bear Archery v. AMS, LLC

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Click on image to learn more about Inter Partes Review

  • Post-grant review – Together with inter partes review, post-grant review replaces inter partes reexamination. Post-grant review is available immediately after patent issuance.  A post-grant review challenge must be filed within nine months of a patent’s issuance (or reissuance). Once the post-grant review period has passed, inter partes review is available.
  • Ex-parte reexamination – Ex-parte reexamination is requested by the patent holder or another party. The review of an already granted patent is based solely on patents and printed publications that are brought to the attention of the USPTO. The request can be filed at any time during the enforceability of a patent.
  • Covered business method (CBM) – CBM review is similar to post-grant review, with some important differences. CBM review can be filed only when post-grant review is unavailable, and it includes unique estoppel provisions that are less extensive than post-grant review. In addition, only a party charged with infringement of a CBM patent can initiate a CBM challenge.
  • Supplemental examination – Supplemental examination allows a patent owner to correct issues prior to litigation by submitting information to the PTO.  

With our singular focus, you can rest assured that our attorneys will be prepared with a thorough understanding of the most recent developments in IP law.