Put Post-Grant Proceedings to Work

Post-Grant Patent Proceedings

Once a patent has been issued, it may still face challenges that can affect its scope, validity, or commercial value. The IP Protectors helps patent owners and other interested parties understand available post-grant proceedings and develop practical strategies for matters before the Patent Trial and Appeal Board (PTAB).

Inter Partes Review and Patent Challenges

Inter partes review (IPR) provides a process for challenging the patentability of issued patent claims based on prior art patents or printed publications under Sections 102 and 103. A third party may petition for review after the applicable statutory period following patent issuance or the conclusion of post-grant review.

The patent owner may submit a preliminary response addressing the grounds raised in the petition. If the PTAB determines that the statutory standard for the institution has been satisfied, the proceeding may move forward toward a final written decision.

IPR matters can involve detailed prior art analysis, claim construction, technical evidence, and persuasive legal arguments. The IP Protectors assists clients in evaluating IPR risks, preparing petitions or responses, and protecting important patent interests throughout the proceeding.

Post-Grant Review Proceedings

Post-grant review (PGR) provides a mechanism for challenging the patentability of certain newly issued patents on a broader range of statutory grounds than IPR. A qualifying third party generally must file a petition within the applicable nine-month period following patent grant or reissue.

The patent owner may respond to the petition before the PTAB determines whether review should be instituted. If proceedings continue, both sides may present legal and technical positions concerning the challenged claims before the Board issues its final written decision.

Because PGR involves strict procedural requirements and potentially significant consequences for patent rights, early assessment is important. The IP Protectors helps clients evaluate the strengths of a challenge, prepare appropriate responses, and develop a strategy suited to the patent’s commercial importance.

Covered Business Method Patent Proceedings

The former Transitional Program for Covered Business Method Patents provided a specialized review process for certain business method patents. The program operated under procedures similar to post-grant review, subject to specific eligibility requirements and limitations.

The program’s statutory sunset occurred on September 16, 2020, meaning new covered business method review petitions are no longer available under that transitional program. Historical matters may still be relevant when reviewing older patent disputes or prosecution records.

The IP Protectors can help clients understand the historical treatment of covered business method patents and assess how other available post-grant procedures may apply to current patent matters.

Patent Derivation Proceedings

A derivation proceeding addresses situations in which an inventor alleges that another applicant obtained an invention through unauthorized derivation rather than independently developing it. The proceeding is designed to determine whether the claimed invention was derived from the petitioner’s inventor and whether the earlier application was filed without authorization.

A petition generally must be supported by substantial evidence and filed within the applicable statutory period following the first publication of a claim to the invention at issue.

These proceedings can involve complex questions concerning inventorship, communications, technical development, and documentary evidence. The IP Protectors helps clients assess potential derivation issues and understand the legal and procedural requirements involved in pursuing or defending such matters.