With significant experience in all types of post-grant proceedings, Steptoe's lawyers are well positioned to strategically advise clients as to the advantages and disadvantages of pursuing one type of review over another, including:
- For Patent Holders
- Supplemental examinations to strengthen an existing patent
- For Patent Challengers
- Post-grant review (PGR)
- Inter partes review (IPR)
- Ex parte reexamination
- Derivation proceedings
- Covered business methods (CBM)
Our team guides clients through the important considerations associated with each option such as the timing to file the petition, the threshold requirements to be met, the available grounds to assert invalidity, and discovery-relevant options.
Since September 2012, post-grant proceedings have been heard by the Patent Trial and Appeal Board (PTAB), and these contested proceedings have taken on features of litigation, with opportunities for limited discovery including document requests and depositions, availability of sanctions, as well as mechanisms for settlement. Representing petitioners, Steptoe boasts a particularly strong record of IPRs that have been instituted by the PTAB. Representing patent owners, we have consistently helped clients avoid institution against key claims. Our experience and skill in both patent prosecution and patent litigation empowers clients with a full service team able to handle any type of post-grant proceeding before the PTAB.
Noteworthy
- Chambers USA, Intellectual Property: Patent, New York (2022-2023)
- China Law & Practice, Shortlisted, Intellectual Property Firm of the Year (2021-2022)
- China Law & Practice, International Firm of the Year: Intellectual Property (2020)
News & Publications
Press Releases
July 20, 2023
Publications
A Comprehensive Overview of PTAB Trends for Biologics
June 26, 2023
By: Michael I. Green, Yun Zhang, Lawrence Kass, John J. Molenda, Ph.D.
Client Alerts
May 26, 2023
Press Releases
May 10, 2023
Press Releases
Four Steptoe Lawyers Named to Lawyers of Color Law Firm Leaders Issue 2022
February 2, 2023
Client Alerts
How to Win on Appeal – Steptoe’s Federal Circuit Update: October 2022
October 27, 2022
Client Alerts
How to Win on Appeal – Steptoe’s Federal Circuit Update: August 2022
August 2022