Our Patent and Trademark Office Trial Practice Group assists companies with post-issuance challenges to patents in the U.S. Patent and Trademark Office (PTO). Comprised of PTO-admitted trial lawyers and patent prosecutors – of which Morrison & Foerster has more than 100 – the group helps clients navigate the intricacies of these proceedings, including those created by the Leahy-Smith America Invents Act (AIA).
The AIA allows third parties to challenge patents via new post-grant review and inter partes review proceedings, which supplement the existing ex parte reexamination process. Business method patents are also subject to special transitional post-grant review proceedings. Patent interference proceedings remain available for patents based on applications filed before March 16, 2013.
The new proceedings provide strategic opportunities to both patentees and third-party challengers. Significantly, the new post-grant review and inter partes review proceedings are PTO proceedings that are directed to invalidating patent claims like the former inter partes reexamination proceeding, but with features similar to conventional litigation. Both allow for limited discovery and culminate in a hearing before a panel of administrative patent judges to determine whether the claims at issue should be invalidated. Because both must be resolved within one year, they provide a relatively fast and cost-effective alternative to conventional litigation.
Our group is drawn from one of the largest IP groups of any general practice firm. It continues our pioneering efforts to pair our trial lawyers with our patent prosecutors to help clients with their most complicated patent-related matters. Our patent litigators have successfully assisted clients in hundreds of patent lawsuits. Our patent prosecutors have done the same in hundreds of reexaminations and interference proceedings, on which the new inter partes review proceedings are modeled.
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