Patent Trial and Appeal Board Proceedings
We have a deep bench of patent litigators and prosecutors admitted to practice before the United States Patent and Trademark Office (USPTO), many of whom hold advanced degrees in a wide array of scientific and engineering disciplines. In addition, a number of our lawyers are former USPTO examiners. Our lawyers have extensive hands-on experience advising clients on all aspects of USPTO practice, including the use of USPTO proceedings, such as patent interferences and reexamination procedures, to resolve strategic patent issues and to avoid or stay costly litigation.
Our litigation and prosecution experience is crucial in helping our clients successfully navigate Patent Trial and Appeal Board (PTAB) proceedings and enables us to provide strategic recommendations to help our clients accomplish their objectives, taking into account whether our clients are seeking to maximize the value of their patents or to maintain a purely defensive posture. We know how to work successfully with the USPTO, and have accumulated significant patent litigation victories for our domestic and international clients in federal district courts, before the U.S. International Trade Commission (ITC) and in appellate courts, including the Court of Appeals for the Federal Circuit.
We work closely with our clients across a wide variety of industries, including material sciences and mechanical arts, computer, electronic and automotive fields, and pharmaceuticals and biotechnology.
Patent Trial and Appeal Board Proceedings
The Leahy-Smith America Invents Act (AIA) modified the patent litigation process and established several new trial proceedings to be conducted in the USPTO by the PTAB. These new proceedings are designed to provide an efficient means to obtain a patentability determination without bringing a patent litigation in federal courts and include inter partes review (IPR), post grant review proceedings (PGR), a transitional program for covered business method patents (CBM), and derivation proceedings which replace interferences. While inter partes reexamination proceedings are no longer available, ex parte reexamination proceedings remains an option, in addition to the new proceedings created under the AIA.
PTAB proceedings share many characteristics and find their genesis in reexamination and interference proceedings. Our depth of experience includes handling both ex parte and inter partes reexamination proceedings, on behalf of third party requesters as well as on behalf of patent owners.
We provide strategic counseling to our clients on how, whether and when to use these PTAB procedures (as well as the ex parte reexamination procedure), in conjunction with—or as an alternative to—litigation. This counseling includes, for example, consideration of the differing standards of proof, the different nature and background of the fact finders, and the impact of any relevant estoppel positions. We work closely with our clients across a wide variety of industries, including material sciences and mechanical arts, cutting-edge computer, electronic and automotive fields, and pharmaceuticals and biotechnology, to develop the most effective strategy to protect our clients’ business in the United States.
We are one of the top filers of IPR petitions, and we provide regular updates on the latest IPR happenings on our Inter Partes Review Blog (www.interpartesreviewblog.com). This broad and diverse hands-on experience positions us to quickly learn our clients’ business, to appreciate their goals and to provide well-aligned and effective legal strategies.
Key PTAB Proceedings
The three major new PTAB proceedings each provide an alternative to more expensive litigation in forums outside the USPTO. They may also provide a quicker resolution of the disputed validity issues before administrative patent judges well-versed in patent law and USPTO procedures. The proceedings may take place at the same time as patent litigation, in advance of a lawsuit, or in lieu of the validity portion of the lawsuit if the court is agreeable to a stay. The proceedings do have some differences:
- Inter Partes Review. IPR is a procedure to challenge the patentability of one or more claims in a patent on the grounds of anticipation and/or obviousness, but only on the basis of prior art patents and publications, as well non-patent literature printed publications. For those patents subject to post-grant review, the nine-month eligibility period must expire before an IPR can be filed.
- Post Grant Review Proceedings. PGR is a procedure to review the patentability of one or more claims in an eligible patent, including invalidity based on patentable subject matter, prior art, definiteness, written description, and enablement. PGR is available to third parties upon filing of a petition within nine months of a patent grant or reissue, but only for those patents/reissues that issue from an application filed after March 15, 2013.
- Covered Business Method. CBM review is a proceeding to review the patentability of one or more claims in a covered business method patent. The transitional program for covered business method patents applies many of the same standards and procedures as PGRs, but has no nine month time limit. However, the petitioner must have been charged with infringement of the patent in question.
Although the first-to-file aspect of the AIA has changed the proceeding on the PTAB’s docket, we continue to represent clients on patented claims in both interference proceedings (filed prior to March 16, 2013) and derivation proceedings (filed after March 16, 2013). We have the experience and knowledge to handle these often contentious matters.
Our intellectual property attorneys also have significant experience with patent reissue proceedings, both broadening reissues, filed within two years of issuance, and non-broadening reissues filed any time after issuance. We have the skill to guide our clients through both types of proceedings, as well as the business and strategic portfolio awareness to make the most effective use of these tools
- Alternative Energy
- Art, Museum and Cultural Property
- Chemicals, Petrochemicals and Refining
- Clean Technology
- Energy Technology
- Health Care
- Hospitality and Hotels
- Legislative Advocacy
- Life Sciences
- Liquefied Natural Gas (LNG)
- Manufacturing and Sales
- Maritime and Offshore Drilling
- Oil and Gas
- Real Estate
- Solar Energy
- Technology and Emerging Companies
- Venture Capital
- Wind Energy
- Copyright Litigation
- Data Privacy and Cybersecurity
- Intellectual Property and Technology
- IP Counseling and Licensing
- Patent Litigation
- Patent Prosecution
- Securing and Maintaining Trademarks and Brand Names
- Trade Secret/Trade Dress Litigation
- Trade Secrets/Trade Dress
- Trademark Proceedings and Litigation
Recognized as a recommended Patent Prosecution, Transactional and Litigation practice in New York, Patent 1000, 2016 (Kenyon)
Recognized as a Recommended Patent (Contentious) Practice in the United States, IP Stars
Recognized as a Recommended PTAB Litigation (USPTO) Practice in the United States, IP Stars
Recognized as a Highly Recommended Patent (Contentious) Practice in New York, IP Stars
Recognized as a Recommended Patent (Contentious) Practice in Washington, DC, IP Stars
- 2/9/2017Andrews Kurth Kenyon Intellectual Property Partner James Rosini Recognized in 2017 Client Choice Awards
- 1/24/2017Andrews Kurth Kenyon Successfully Represents The Jewelry Channel in Patent Infringement Case