Our experience with patents does not end with patent preparation and prosecution. We also leverage our deep technical expertise, legal skills, and knowledge of U. S. Patent and Trademark Office procedures in post-grant proceedings. Our professionals engage in all aspects of post-grant practice, including inter partes review, post-grant review, covered business method patent review, ex parte reexamination, reissue, derivation proceedings, and interference proceedings. Post-grant strategies are developed and skillfully implemented for our clients to achieve specific goals inside and outside the context of litigation.
AIA Post-Grant Proceedings
The post-grant proceedings established under the America Invents Act (“AIA”), particularly inter partes review, post-grant review, and covered business method patent review, are increasingly being utilized by parties to challenge the validity of one or more patent claims in an effort to avoid or defer litigation.
Before one of the AIA post-grant proceedings is undertaken, it is necessary to analyze the risks and benefits of these types of post-grant proceedings versus other proceedings (e.g., ex parte reexamination, reissue, or litigation); to develop post-grant strategies based on anticipated or concurrent litigation; and to appreciate the estoppel implications of a potential post-grant proceeding.
Once initiated, the procedures for administering AIA post-grant proceedings are complex. The professionals of Edell, Shapiro & Finnan are regularly engaged in post-grant proceedings for both patent owners and petitioners, and they possess the specialized knowledge necessary to navigate the process, utilizing the proceedings to assist clients in achieving their business objectives.
Ex Parte Reexamination
Ex parte reexamination can be a cost-effective alternative or supplement to AIA post-grant proceedings under certain circumstances. Drawing upon years of experience representing clients in reexamination proceedings, the professionals of Edell, Shapiro & Finnan advise clients on the proper role of reexamination as part of a post-grant strategy and provide effective representation during reexamination proceedings.
The reissue process is an often used tool effective in correcting selected errors contained within a patent, including narrowing or broadening the scope of claim protection. The reissue process may be utilized by patent owners to submit claim amendments necessary to maintain the validity of claims (e.g., claims whose validity is threatened by a change in the law occurring after the patent issued). Patent owners may further utilize the reissue process to initiate an interference with a third party pending application. The professionals of Edell, Shapiro & Finnan work with our clients to employ post grant procedures to strengthen our clients’ patents and achieve business goals.
Our professionals advise patent-holders and accused infringers in all aspects of intellectual property disputes. For example, we counsel clients through early-stage product development, risk management and litigation avoidance, prior art searches, patent disputes, patent enforcement, and potential and ongoing litigation. We work with both patent owners and accused infringers in the patent enforcement process in a number of roles. For example, we act as lead counsel in certain matters, and in other matters we act as supporting counsel by providing our technical and legal expertise on complicated patent matters such as claim construction, infringement and invalidity contentions, and summary judgment proceedings. Our attorneys are also available to act as local counsel in the federal courts of Maryland, Virginia, and the District of Columbia.