U.S. Patent Office Trials [combines interferences and reexamination—no more inter partes reexamination after Sept 16, 2012]
For over 40 years, Sughrue Mion, PLLC has been internationally recognized for its expertise in USPTO post-grant proceedings, including patent interferences and ex parte and inter-partes reexamination. Sughrue’s USPTO Patent Trials group has extensive experience in this specialized area of administrative litigation. Our team of specialists has successfully advocated clients’ interests across the spectrum of technologies, in the USPTO, district courts and the Federal Circuit.
The America Invents Act broadens the U.S. system of post-grant patent review to include new inter partes proceedings, in addition to existing ex parte reexamination. The new derivation, post-grant review, and inter partes review procedures will be adversarial, and will often require testimony and cross-examination of witnesses and experts, and a complex motions and discovery practice governed by unique inter-partes procedures that have been adopted from interference practice.
The strategic use of interrelated post-grant proceedings will provide complex and rapid avenues for challenging the validity of important U.S. patents. In high-profile disputes, companies have increasingly taken advantage of inter partes reexamination, which is the fastest-growing area of U.S. patent litigation. The new inter-partes proceedings will replace inter partes reexamination, with the significant additional advantage of a final USPTO decision expected within one year.
Inter partes review and post-grant review will alter the course of patent litigation, by providing a parallel and lest costly administrative path for challenging patent validity. In ongoing litigation, parallel post-grant proceedings will provide grounds for seeking a stay or opposing preliminary injunctive relief, and the unique opportunity to eliminate liability for past damages, as well as directly attacking validity. When filed early, post-grant proceedings can effectively delay or avoid litigation, by affording the opportunity to resolve or settle the dispute.
In addition to the inter-partes proceedings, ex parte reexamination will continue to be a preferred route for patent owners to strengthen their patents against prior art. Supplemental examination will provide a new avenue for patent owners to counter charges of inequitable conduct, eliminating the expenses of protracted and unpredictable district court proceedings.
Sughrue’s USPTO Patent Trials litigators are uniquely qualified to counsel clients on the strategic uses of the new USPTO proceedings, alone or in the course of infringement litigation. Based on decades of inter-partes experience, our goal is to use our expertise to develop innovative and cost-effective strategies for administrative litigation, including consideration of settlement and arbitration of disputes.