Reexamination, Inter Partes Review & Derivation Proceedings
IP Post-Grant Review
Comprehensive Post-Grant Review Practice
On September 16, 2012, the United States Patent and Trademark Office (USPTO) implemented the provisions of the Leahy-Smith America Invents Act. The new provisions provide for a new post-grant review, and inter parties review proceeding, to be conducted before the Patent Trial and Appeal Board. These new provisions were created to improve patent quality by giving third parties methods to challenge patents that are less complex than typical litigation process and ultimately less expensive. STEVEN IVY P.C. specializes in post-grant review. In addition, our law firm handles a wide range of other intellectual property issues, such as patent, trademark and copyright procurement.
The hallmark of our practice is personal service. Therefore, we work closely with our clients to ensure that their interests are properly protected. STEVEN IVY P.C. is servicing clients in several Illinois counties, including: Cook County, Lake County, DuPage County, Kane County, DeKalb County, Will County, McHenry County and Kendall County. Our clients can meet with us in eight Illinois locations, including: Chicago, Lisle, Northbrook, Oak Brook, Rosemont, Saint Charles, Schaumburg, and Warrenville.
Post-Grant Review Process
Post grant review is a new trial proceeding that will be conducted by the Patent Office’s Patent Trial and Appeal Board to review the patentability of one or more claims in a granted U.S. Patent. The trials allow for limited discovery, which has not been available in ex parte or inter partes reexamination, the existing procedures for challenging patents in the U.S. Patent and Trademark Office. Although, there are many grounds for seeking both post-grant review and inter partes review, it is important to point out that post-grant review may be sought in a broader range of circumstances than inter partes review. The process begins with filing of a petition, which may be filed by any person who is not the owner of the patent in question. For post-grant review, the petition must be filed no later than nine months after the grant date of the patent, or in the case of a reissue patent, no later than nine months after the issuance was granted. The petition must list the challenged claims, and for each of those claims identify the grounds on which such challenge is based. The final determination in any post-grant review will normally be issued no later than one year after the proceeding is instituted.