licensing_iconPost Grant Proceedings

Post grant proceedings cover patent office trials such as Inter Partes Review (IPR), Post Grant Review (PGR), and Business Method Review (CBM).

Other post grant procedures:

  • Reexamination 
  • Supplemental Examination 
  • Reissue Applications 
  • Certificates of Correction 

BSKB was one of the first firms to have a practice group dedicated to patent reexaminations, patent reissues and other types of post-grant patent review proceedings before the U.S. Patent and Trademark Office (USPTO). Our experience in these specialties allows us to offer clients powerful alternatives that can be utilized in addition to or instead of patent litigation. Post grant proceedings involve aspects of patent litigation and patent prosecution that require highly experienced counsel who are skilled in navigating and conducting these proceedings before the USPTO as well as patent litigation in the courts. The creation of additional post grant proceedings as part of the America Invents Act (AIA) has allowed BSKB’s post grant practice group to utilize its extensive expertise in these adversarial challenges to patentability.

BSKB is pleased to offer a separate website on post-grant review practice, postgrantproceedings.com. Here you will find up-to-date information about post-grant issues and recent cases. BSKB is also pleased to offer a post grant proceeding-specific training seminar, the Post Grant Bootcamp, to educate participants on post grant issues.

As with our patent prosecution practice and patent litigation practice, our post-grant review practice covers every aspect of science, technology and engineering. Our post grant patent team is comprised of skilled intellectual property attorneys and other experts who have the background required for understanding complex, multi-disciplinary technologies and arguing before senior level Patent CRU Examiners, the Patent Trial and Appeal Board (PTAB), and the Court of Appeals for the Federal Circuit (CAFC). Specifically, since their creation in 2012, BSKB has represented clients in numerous inter partes reviews and covered business method proceedings. A representative list is below.

BSKB’s post grant patent law practice leverages strategic insight of the latest patent law trends, comprehensive understanding of technical issues and in-depth knowledge of USPTO proceedings to strengthen patents, challenge patentability, and successfully license and enforce patent rights on behalf of our clients.


 

Attorneys and Professionals

  • Leonard R. Svensson

    Senior Counsel

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  • Marc Weiner

    Marc S. Weiner

    Partner

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  • Chad Wells

    Chad D. Wells

    Partner

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Insights

  • April 28, 2020

    Indefinite claims at the PTAB

    by Chad M. Rink and Hailey R. Bureau, Ph.D. | World Intellectual Property Review

    Chad Rink and Hailey Bureau, Ph.D. talk about indefinite claims at the PTAB and alternative routes in WIPR- Issue 1.

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  • February 8, 2018

    Prior Art Takes New Shapes: Relying on Non-traditional Prior Art to Invalidate a Patent

    by MaryAnne Armstrong, Ph.D. | Pharmaceutical Patent Analyst

    When we teach kids today about Internet privacy, one of the things that is emphasized is that once something has been posted on the Internet, that posting seemingly takes on a life of its own, with an eternal existence, even if the original poster deletes the posting. Unfortunately, companies have not learned this lesson and temporal items, such as press releases and Internet publications, can come back to haunt a patent owner in the form of invalidating prior art for a post-grant review. The following paragraphs consider ‘non-traditional’ prior art, for example, press releases, Internet publications, drug labels among others, and examine considerations in determining whether such non-traditional prior art can be used as a basis for invalidating a patent.

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Recent News

  • August 27, 2020

    USPTO Fees Update

    Effective October 2, 2020, many USPTO fees will increase including application filing, RCE, appeal and issue fees. Therefore, to save costs, with one exception, you may consider filing any items with fee increases prior to October 2, 2020. The exception relates to the payment of the Issue Fee. Any issue Fee having a mailing date prior to October 2, 2020, will have the lower Issue Fee printed on the Notice of Allowance (even if the Issue Fee is paid after October 2, 2020).

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  • May 12, 2020

    BSKB Partners Marc S. Weiner and MaryAnne Armstrong, Ph.D., to Present Lectures to JPAA Regarding Post Grant Patent Proceedings

    BSKB partners Marc S. Weiner and MaryAnne Armstrong, Ph.D., have been invited to speak in Tokyo, Japan to members of the Japan Patent Attorneys Association (JPAA) on October 16, 2012. They will present a lecture on the topic of post grant patent proceedings, explaining when each type of procedure can be used and the advantages and disadvantages of each procedure.

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