The Leahy-Smith America Invents Act enacted in 2011 drastically changed the landscape for challenging the validity of issued patents.  The America Invents Act created several trial-like proceedings that may be implemented post issuance of a patent.  These proceedings include Inter Partes Review and Post-Grant Review  proceedings.  By instituting one of these proceedings, a patent challenger can petition for the Patent Trial and Appeal Board of the U.S. Patent & Trademark Office to adjudicate certain validity issues of an issued patent.  Given that trials under the America Invents Act are often faster than district court litigation and involve limited types of discovery, the Patent Trial and Appeal Board is a key battleground for validity challenges.  In addition to providing opportunities to invalidate a patent, proceedings under the America Invents Act allow patent claims to be amended in certain situations.

Recognizing that proceedings under the America Invents Act combined elements of traditional patent litigation with elements of patent prosecution and administrative law, when handling such matters, Thomas|Horstemeyer assembles teams comprising attorneys that have experience in patent litigation and patent prosecution.  As a result, we have successfully represented patent owners and patent challengers in proceedings under the America Invents Act, often in conjunction with concurrent district court litigation.  Our attorneys are also experienced in handling appeals of decisions rendered under the America Invents Act before the Court of Appeals for the Federal Circuit and subsequent remand procedures.  In fact, the attorneys at Thomas|Horstemeyer crafted procedures that were ultimately adopted by the Patent Trial and Appeal Board for handling decisions on cases remanded from the Federal Circuit.

The attorneys at Thomas|Horstemeyer handle the following types of post-grant patent proceedings:

An Inter Partes Review is a trial-like validity proceeding conducted at the Patent Trial and Appeal Board for determining whether a patent satisfies novelty and non-obviousness requirements.  An Inter Partes Review may be instituted upon a showing that there is a “reasonable likelihood” that at least one challenged claim is unpatentable in view of the asserted prior art references.  If an Inter Partes Review is instituted, the Patent Trial and Appeal Board will issue a final written decision within one year of the institution date.

A Post-Grant Review is a trial-like proceeding conducted at the Patent Trial and Appeal Board to determine whether a patent is valid based on various grounds.  A Post-Grant Review can involve any basis for invalidity permitted under 35 U.S.C. § 283(b)(2) or (3), including whether a patent complies with novelty, non-obviousness, written description, enablement, and subject-matter eligibility requirements.  A Post-Grant Review may be instituted upon a showing that “it is more likely than not” that at least one challenged claim is unpatentable.  If a Post-Grant Review is instituted, the Patent Trial and Appeal Board will issue a final written decision within one year of the institution date.

Derivation Proceedings are relatively rare trial-like proceedings conducted at the Patent Trial and Appeal Board to determine whether an inventor named in a patent application derived the claimed invention from another person who is named as an inventor in a later-filed application.  Only patent applications subject to the first-inventor-to-file provisions of the America Invents Act can be subject to a Derivation Proceeding.

An Ex Parte Reexamination is a process in which a patent owner or a third-party requester can have an issued patent reexamined by a panel of patent examiners in view of a “substantial new question of patentability.”  Only the patent owner as represented by counsel may participate in the proceeding after reexamination has been ordered.

A patent interference is a priority contest before the Patent Trial and Appeal Board to determine priority issues when multiple parties claim the same invention.  The America Invents Act, which changed U.S. patent law from a first-to-invent regime to a first-inventor-to-file regime, rendered interferences obsolete, but patents and patent applications filed before the America Invents Act can still be the subject of an interference.

A patent reissue application is filed to correct a variety of errors in issued patents.  In this process, an applicant submits that the patent is wholly or partly inoperative or invalid.  During the process that a reissue patent application is prosecuted before the U.S. Patent & Trademark Office, the claims scope cannot be broadened beyond the original scope of the claims.