An Eye on Post-Grant Patent Proceedings

An Eye on Post-Grant Patent Proceedings


Since the America Invents Act of 2012 dramatically altered opportunities for third parties to challenge the validity of issued US patents through Patent Office proceedings, WilmerHale has emerged as leader this space having filed 38 Inter Partes Review petitions six Covered Business Method petitions. With deep experience handling post-grant Patent Office proceedings, the firm has been able to implement for clients the best strategies using Ex Parte Reexamination, Inter Partes Review and Covered Business Method Review to challenge or defend issued patents.

“WilmerHale’s patent prosecution and litigation experience enables us to navigate the complex procedural, substantive and strategic issues posed by post-grant proceedings and deliver the best results for our clients,” noted Don Steinberg, chair of the firm’s Intellectual Property. “I credit lawyers, spearheaded by the Post-Grant Patent Proceedings Group, who have made it a priority to share their knowledge with those most impacted by these changes.”

As a pioneer in this area, the firm’s Post-Grant Proceedings Group actively shares its knowledge and insights with the industry on a regular basis. In a six-part article series published by IP Law360, the team outlines and discusses some of the most relevant issues to those impacted by these changes:

Last fall, the firm hosted a three-part webinar series, “A Practical Guide to Inter Partes Review,” during which attorneys provided strategic guidance on the implications of these changes and how they may affect businesses. Materials and presentations are still available, while the firm will host a new series later this spring.