Knobbe Martens Intellectual Property Law - USPTO Trials and Post-Grant
Proceedings
We are one of the few firms well-positioned to handle the unique and
often complicated aspects of trials and post-grant proceedings before
the United States Patent and Trademark Office (USPTO). Our
dedicated team of patent attorneys and paralegals have extensive
experience that allow 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. Indeed, our USPTO-registered attorneys are involved
in all aspects of inter partes proceedings. We regularly develop
strategies that help our clients both invoke and/or avoid those
proceedings, using our vitally important litigation skills and deep
technical understanding to proactively establish a strong position
that, in many cases, prevents long and costly opposition. In the
past two decades, we have handled some 30 patent interferences. And
since the enactment of the America Invents Act (AIA) in September
2012, we have handled nearly 100 IPRs and CBMs, making us one of the
top firms actively engaged in this practice area. Our expertise spans
a wide range of technical disciplines, including molecular biology,
genetics, semiconductor processing, computer software, and medical
devices. We also stand ready to help our clients leverage 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 of the changes, and positioning us to provide
the highest level of representation in the USPTO's new 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 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