PTO Proceedings under the AIA

Under the America Invents Act (AIA), six new proceedings were introduced by the USPTO including: Third Party pre-issuance submissions, Post Grant Review (an opposition proceeding), Inter partes review (IPR), Ex parte Re-Exam, Supplemental Examination, and Derivation Proceedings. We can help you navigate through a complex maze of rules and standards associated with these proceedings.

Winning with Technical Depth

PTAB trials like IPRs are ostensibly about prior art, but they often turn on the technical interpretation of a single claim term. Our team's deep engineering background allows us to:

• Deconstruct Expert Declarations: We can spot the technical flaws in an opposing expert's testimony because we've built similar systems ourselves.
• Draft Technical Arguments: We explain complex art to the Board with the precision of engineers, reducing the risk of misunderstanding.
• Identify "Hidden" Prior Art: We know where to look for non-patent literature (conference papers, datasheets, standard specs) that pure legal teams might miss.

Inter Partes Review (IPR)

Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents, inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review.

Post Grant Review (PGR)

Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent.

Derivation Proceeding

A derivation proceeding is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization.