The America Invents Act (AIA) has created several new post-grant proceedings for third parties to challenge the validity of issued U.S. patents before the U.S. Patent and Trademark Office (USPTO). These proceedings have game-changing potential for challengers, providing a quicker and less expensive way to invalidate patents than district court litigation. Our attorneys can help clients chart a course through this evolving landscape.


The advantages of the new post-grant proceedings include the use of a standard that is more favorable to the challenger and involvement of a technically trained administrative law judge who hears such challenges. These proceedings also do not entail excessive discovery.

Ballard Spahr's Post-Grant Team is made up of experienced patent litigators and patent lawyers who hold Ph.D.s in a variety of fields and have experience handling both district court litigation and various post-grant proceedings. Our work includes helping clients use post-grant proceedings as part of a preemptive strategy to challenge patents before a product launch.

Even when other counsel has been hired to handle related district court litigation, Ballard Spahr has been engaged to conduct post-grant proceedings. Our attorneys have handled numerous USPTO proceedings, including the new procedures. In addition, we are well versed in internationally based post-grant and opposition proceedings.

Our team helps clients navigate:

INTER PARTEs REVIEW

Any person other than the patent owner may file a petition for inter partes review (IPR) challenging a patent's validity on the grounds that it is not novel based on the disclosure of another patent or printed publication, or is obvious based on the state of the art at the time as reflected in patents and printed publications.

To date, the vast majority of IPRs have been filed against patents involved in district court litigation. Many district courts have opted to stay the related litigation pending the outcome of an IPR. Like a PGR, an IPR “trial” also has depositions and limited document production and concludes with a decision generally within one year of institution.

TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS

Only peoples who have been sued or charged with infringement of a “covered business method patent” may petition for a covered business method review (CBM) on virtually any ground. The AIA defines a “covered business method patent” as a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. It does not include patents for technological inventions.

A CBM generally employs the same procedures of a PGR, including the availability of limited discovery and depositions. Like PGRs and IPRs, CBMs will generally be completed within one year of institution. Unlike PGRs and IPRs, however, the statute covering CBMs contains a provision that makes it highly likely that a district court will stay a related litigation pending the outcome of a CBM. CBMs are considered a “transitional program” because they will be available only for petitions filed on or before September 16, 2020.

POST-GRANT REVIEW

Any person other than the patent owner may file a petition for post-grant review (PGR) challenging a patent's validity on virtually any ground. PGRs can only be filed against patents that issue from applications filed on or after March 16, 2013, and petitions must be filed within nine months after the grant of a patent.

The PGR “trial” includes depositions and document production, but the process is narrower and more streamlined than what is done in district court litigation. Once properly instituted, the trial concludes with a decision generally within one year.

EX PARTE REEXAMINATION

Any person, including the patent owner, can ask the USPTO to reexamine a granted patent based on identified patents or printed publications. For the request to be granted, the requester must show that the prior art patents or printed publications establish a substantial new question of patentability.

Because this is an ex parte proceeding, after the request is filed, a third-party requester is generally excluded from participating. If the request is granted, a panel of three experienced examiners will examine the application in a proceeding that is similar to ordinary prosecution.


contact

Mitchell A. Katz 
Tel 678.420.9392
katzma@ballardspahr.com