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Post Grant Proceedings

M&K has significant experience handling the intersection of complex patent litigation and post grant proceedings at the PTO. Our litigation and post grant teams work closely together to coordinate strategy and ensure that the overall goals and objectives of the client are achieved.

The following are post grant proceedings handled by our firm:

Inter Partes Review

The America Invents Act (AIA) created inter partes review (IPR), which allows a third party to challenge the validity of patent claims based on patents and printed publications. The request is filed beginning nine months after issuance of the patent.

Post Grant Review

Post grant review allows a third party to challenge the validity of patent claims based on any invalidity grounds provided in the Patent Act.  A post grant review may be requested within nine months after the grant of a patent or issuance of a reissue patent.  The patent must have a priority date on or after March 16, 2013.

Ex Parte Reexamination

Ex parte reexamination is a proceeding in which any person may request reexamination of a U.S. patent based on one or more prior patents or printed publications. A requester who is not the patent owner (i.e., a “third party requester”) has only limited participation rights in the proceeding.

Covered Business Method Review

A person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.  A covered business method review may be requested except during the period in which a petition for post-grant review could be filed—e.g., nine months after the issuance of a patent that is subject to the first inventor-to-file provisions.  The transitional review program is available for non-first-to-file patents, even within the first nine months of the grant of such patents.

If you would like more details on inter partes review, post grant review, ex parte reexamination, or covered business method reviews, please contact Jennifer Meredith at jmeredith@nullmeredithkeyhani.com.