Post-Grant Proceedings | AIA Trials

The America Invents Act (AIA) of 2011 was the greatest overhaul of the patent system since 1952. At its core, the AIA shifted U.S. rights to a patent from the previous "first-to-invent" system to a "first inventor-to-file" system for patent applications. Practically, the most significant changes were to the post-grant proceedings offered by the USPTO, which allows for either a challenge to a competitor’s patent, or strengthen a patent already granted. Specifically, patent holders now have two potential options for strengthening an existing patent: supplemental examination and patent reissue. Under AIA, prospective patent challengers now have essentially five options: post-grant review; inter partes review, ex parte reexamination, covered business methods and derivation proceedings.

Engage attorneys skilled in both patent prosecution and patent litigation for your post-grant proceedings.

Whether you are challenging or strengthening a patent, you need a legal team that has the right combination of patent prosecution and litigation experience. Most of DRM’s IP directors have decades of patent prosecution experience. They have handled volumes of patents, both at DRM and at some of this country’s leading IP firms, while other team members have several years of experience working as patent examiners at the USPTO. Additionally, our team includes attorneys with significant patent litigation practices, patent agents, and a support network of dedicated intellectual property paralegals.

DRM is unique in that not only do our attorneys have the experience required to handle any post-grant proceeding before the USPTO, but our collaborative approach to strategic development ensures your business goals and objectives are at the forefront of every decision made throughout the proceedings. We use our cutting-edge project management tool to allocate resources appropriately, manage the workflow, and monitor the budget, while keeping you informed and involved in the key decisions that could affect both the legal and monetary outcome of your matter.

For more information about DRM's post-grant proceedings and AIA trials practice, please contact Thomas KohlerMorgan Heller or Kevin McGrath.  

DRM’s attorneys combine top-drawer patent litigation with a comprehensive understanding of post-grant procedures to help clients achieve their goals.

With specific experience handling post-grant proceedings for companies that develop software, business methods, mechanical systems, and medical devices, DRM attorneys provide high-quality legal guidance that is appropriate to our client’s business goals and objectives. We help our clients understand the ramifications of the various proceedings, from both a legal and business perspective. Because we frequently work with small to medium-sized companies, we make it our job to help our clients make informed decisions regarding risks and return through our collaborative communication style and project management systems.

When you are challenging a patent, or looking to strengthen a patent you’ve already been granted, DRM can help with the following proceedings:

  • Inter partes Review (IPR)
  • Post Grant Review (PGR)
  • Covered Business Method Review (CBM)
  • Ex parte Reexamination (Reexam)
  • Reissue
  • Derivation proceedings

For more details about the differences between these proceedings, visit the USPTO website

Recent Accomplishments

  • DRM was hired to represent a subsidiary of a global supplier of electronic equipment in connection with a petition for Post Grant Review (PGR) filed against one of the client’s US design patents. DRM was also retained to coordinate a response to an invalidity action filed in the Korean IP Office by the same opponent against a corresponding Korean design registration. Grounds put forward for invalidity in the US PGR petition were that the design is primarily functional and that inventorship was wrong. However, our attorneys were able to effectively argue that, based on applicable case law and evidentiary rules, the grounds for invalidity put forth in the petition were insufficient. The Patent Trial and Appeal Board (PTAB) of the USPTO largely adopted DRM’s arguments in dismissing the petition. This case is important because it is the first PGR petition filed against a design patent and the first PGR petition (design or utility) in which the petitioner argues for invalidity based on incorrect inventorship. We are still working with a Korean associate in the parallel proceeding, but we believe we will be able to prevail on behalf of our client against the same inventorship-error invalidity challenge under Korean law.
  • The defendant in an infringement case sought to knock out our client’s patent in an ex parte reexamination using an extensive collection of allegedly invalidating prior art. We prevailed, and in response, the defendant did an even more exhaustive search and initiated a second ex parte reexamination. We prevailed again.
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