Email   Print  
Print PDF
Contact Us

More Information

Call us at 612-604-6400
or click here to contact us.

Latest From Our Blog

What Famous Quarterback Named Elisha Allegedly Provided Fake Helmets To Sports Dealers?
Elisha is the two time Super Bowl MVP New York Giants quarterback Eli Manning. Collecting equipment used, or uniforms worn, during an NFL game is big business. Young and old ...
Here’s to Calling the Kettle, Brand Too?
The teapot read my post from last week and is not only calling the kettle black, but brand too: So, we’ll have to see whether saying it’s so makes it so, after we...

Post-Grant Proceedings

The Leahy-Smith America Invents Act (“AIA”), which revolutionized the U.S. patent system,  is primarily recognized for changing the U.S. patent system from a “first to invent” to a “first inventor to file” system. However, the AIA also made significant changes to the way that an issued patent can be challenged by implementing revised and expanded post-grant proceedings. The availability of these proceedings change the way that questions of patent validity are handled.

Four types of post-grant proceedings are provided by the AIA:
  • post-grant review (PGR),
  • inter partes review (IPR),
  • covered business method patent review (CBM), and
  • ex parte reexamination (EPR).
Each of these proceedings becomes available under different circumstances. However, PGR, IPR, and CBM proceedings each follow a similar procedural format involving a quasi trial before the Patent Trial and Appeal Board (PTAB). In contrast, EPR proceedings are conducted before an examiner.

While the circumstances of each proceeding may differ, an overall goal of the several post-grant proceedings is to significantly reduce the amount of time spent on questions of patent validity when compared to court proceedings. For example, each of the PGR, IPR, and CBM proceedings have one-year schedules from the date of institution of the proceedings, compared with the several years it can take when going through the courts. Winthrop & Weinstine’s patent attorneys understand that avoiding costly and disruptive litigation is a priority to clients, and  are, therefore, strong advocates of the new post-grant proceedings.

In addition, because post-grant proceedings are argued before the Patent Trial and Appeal Board (“PTAB”), those deciding the fate of the patent in question are experienced in patent rule analysis and with the technology at issue, to a level rarely found with a judge or jury.

Our attorneys are deeply knowledgeable in a wide range of technologies, and have extensive experience both in patent litigation and patent prosecution before the U.S. patent office.  Commonly, post-grant proceedings are initiated in conjunction with an existing lawsuit and our attorneys are in the unique position of being able to work closely with clients to develop a post-grant strategy that effectively complements their litigation strategy.

Our attorneys’ skill and tenacity on behalf of their clients have already established a track record of success in post-grant proceedings. As of the close of 2013, our team successfully convinced the PTAB to deny 100% of the inter partes review petitions in which we have been involved, in an environment where the odds of petitions being denied stand at 15%.

Whether you find yourself on the defensive end of patent infringement allegations or are a patent owner whose patent rights may be challenged, Winthrop & Weinstine’s team works hard to help you find solutions.

Professionals

Name

Phone

Email

Michelle E. Dawson
Attorney 
p  (612) 604-6391 
f   (612) 604-6991 
Erin O. Dungan
Attorney 
p  (612) 604-6579 
f   (612) 604-6979 
Brett A. Klein
Attorney 
p  (612) 604-6392 
f   (612) 604-6992 
Devan V. Padmanabhan
Attorney 
p  (612) 604-6748 
f   (612) 604-6948 
Paul J. Robbennolt
Attorney 
p  (612) 604-6761 
f   (612) 604-6961 
Sri K. Sankaran
Attorney 
p  (612) 604-6753 
f   (612) 604-6953 
Nadeem W. Schwen
Attorney 
p  (612) 604-6456 
f   (612) 604-6959 
Nathan J. Witzany
Attorney 
p  (612) 604-6393 
f   (612) 604-6993 
 
  |  Login
Steve Baird's expertise and pursuit of excellence in the trademark field have been of great benefit to our companies.
- Wulf-Heinz Pflaumer, Managing Director of Umarex Sportwaffen GmbH & Co. KG, and Managing Director of Carl Walther GmbH
We help strengthen the value of intellectual property assets through strategic joint ventures and technology alliances.
- Michael T. Olsen
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Susan A. Perera
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Sharon D. Armstrong
It's always been my philosophy to know my client's goals, advise on business issues, and build a relationship that endures over time.
- Devan V. Padmanabhan
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- David P. Pearson
I work with clients to explain their complex IP issues to judge and jury, clearly and persuasively.
- Sri K. Sankaran
I work with clients to explain their complex IP issues to judge and jury, clearly and persuasively.
- Sri K. Sankaran
We help strengthen the value of intellectual property assets through strategic joint ventures and technology alliances.
- Bradley J. Walz
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Daniel J. Kelly
Clients deserve 'insurance' that what they are doing is protected and in tune with the direction of their business goals.
- Nathan J. Witzany
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Paul J. Robbennolt
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Edward R. Culhane
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Scott J. Dongoske
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Dean D. Willer
Catlan's detail oriented intellectual property strategy enabled us to successfully secure all the IP assets necessary to complete our corporate merger.
- Kay Horsch, Founder & Chairman of The Human Spirit Initiative
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Craig S. Krummen
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Brett A. Klein
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Michelle E. Dawson
Winthrop & Weinstine is here to protect your most important intangible business assets - today and in the future.
- Martha J. Engel