Post-grant review proceedings in the US Patent and Trademark Office (USPTO) are one of the most significant changes brought by the Leahy-Smith America Invents Act (AIA). These proceedings include inter partes review (IPR), covered business method review (CBM) and post-grant review (PGR). Successfully asserting or defending a post-grant review proceeding requires understanding the unique nature of the proceedings, the voluminous procedures outlined in the USPTO regulations, and the litigation components of the proceedings.
McDermott’s post-grant practitioners include patent litigators and prosecutors with vast technical and scientific backgrounds, as well as extensive experience before the USPTO. Together their skills and knowledge help our teams structure the strongest possible cases on behalf of our clients’ before the PTAB. We are also well versed in coordinating concurrent district court litigation matters involving the same or similar patents at issue in the post-grant review proceedings. And if the case is appealed, McDermott’s lawyers are adept at handling these proceedings before the US Court of Appeals for the Federal Circuit.
Our post-grant team is co-led by the former general counsel at the USPTO, who helped draft and implement federal rules and regulations, including those applicable to post-grant review proceedings under the landmark AIA. His insight and guidance helps ensure our clients’ cases are presented using the best possible strategies.
Recognizing our clients’ need for financial predictability over post-grant matters, we also offer our clients cost-effective solutions. Oftentimes we employ alternative fee arrangements, and we always strive to manage matters so that they are handled strategically and efficiently.