In late 2011, the patent system of the United States experienced its most significant change in decades. With the passage of the Leahy-Smith America Invents Act (AIA), the long-established first-to-invent system is being replaced by a first-inventor-to-file system. The law also overhauled the mechanisms for post-grant challenges to patents and other administrative trial proceedings within the US Patent & Trademark Office (USPTO). The AIA established inter partes review, post-grant review, derivation and supplemental examination proceedings before the newly created Patent Trial and Appeal Board, and began the process of phasing out inter partes reexamination and interference proceedings.
For any party involved in the development of new products, processes and technologies — from individual inventors and start-up enterprises to established, Fortune 500 companies — these and other new provisions of the law have wide-ranging impacts on the management and protection of their intellectual property portfolios. As this new system takes effect, businesses must be prepared to defend against a rising tide of challenges to their own valid patents, and to take advantage of opportunities to remove invalid patents that stand in the way of legitimate commercial activity.
The highly skilled patent lawyers of Hunton & Williams LLP have decades of experience representing clients in patent-related disputes in a wide variety of technical fields, including mechanical, electrical, computer, chemical and biotechnology inventions. Our team includes a number of former USPTO patent examiners and other professionals whose educational backgrounds and private-sector experience run the gamut of technical disciplines. We are deeply familiar with the operations and activities of the USPTO, and are adept at handling complex issues arising from USPTO post-grant proceedings and concurrent federal district and appellate court litigation. We have played an active role in the implementation of the AIA, and we draw on this firsthand knowledge to help clients prepare and plan for this new era of USPTO post-grant practice.
We provide effective counsel at every step of post-grant proceedings, from preplanning diligence through appeal to the US Court of Appeals for the Federal Circuit. Similarly, our contested cases team has a long history of success leveraging its experience before the USPTO to pursue successful resolution of post-grant disputes. We have many years of experience handling ex parte and inter partes reexaminations and reissue proceedings. We are one of the few firms with a longstanding interference practice and are well versed in the trial procedures and practices of the Interference Trial Section of the Board of Appeals and Interferences — experience we draw on when planning for and handling disputes under the new post-grant regime of the Patent Trial and Appeal Board. We fully understand the distinction between courtroom proceedings and the USPTO trial and appeals process, and regularly serve as lead counsel and co-counsel in both arenas.
In this new environment, our lawyers can help clients pursue several key strategies and explore options that can enable a smooth transition to the new system:
- Inter partes review. Our attorneys stand ready to mobilize best practices derived from their record of success in contested post-grant proceedings, conducted through the firm’s established interference and reexamination practice, before the newly created Patent Trial and Appeal Board. As highly involved participants in the legislative and rulemaking process, we regularly and effectively advise clients on how to optimize their positions through the use of these new procedures.
- Covered Business Methods (CBM). Our lawyers have in-depth experience in technologies related to business method patents and have taken an active role in prosecuting and litigating patents involving these technologies. We were also active in the legislative and rulemaking process related to the provisions implementing the CBM program.
- Post-grant review proceedings. Patents under the new first-inventor-to-file system will be eligible for post-grant review — an opposition-like proceeding that can be filed by third parties within the first nine months of issuance of the patent. Hunton & Williams lawyers’ vast experience with reexamination and interference proceedings has been instrumental in helping clients prepare for the upcoming changes, including post-grant review proceedings.
- Derivation proceedings. Hunton & Williams attorneys are utilizing the extensive knowledge gained through the firm’s established interference practice — the predecessor to the newly created derivation proceeding — to advise clients when disputes arise over the inventorship of an issued patent.
- Third-party-requested reexaminations. Hunton & Williams attorneys have many years of experience representing both patent owners and requesters in post-grant proceedings, including anonymous and patent owner-requested ex parte reexamination proceedings, as well as third-party-requested ex parte and inter partes reexamination proceedings.
- Interference strategies. Our attorneys have represented junior and senior parties in biotech, chemical, mechanical and electrical interference proceedings before the Trial Section of the Board of Appeals and Interferences. These strategies have included leveraging our experience before the Trial Section to invalidate competitors’ patents and obtain successful awards of priority and inventorship.
- Litigation-related strategies for patent owners, defendants and third parties. Drawing from the firm’s depth of experience in high-profile litigation and our many years of post-grant experience in the USPTO, our lawyers have devised creative and successful strategies to maximize our clients’ positions in both types of proceedings.