Post Grant Patent Proceedings

Oblon Spivak’s Post Grant Patent practice group is the leading such practice in the U.S., having recovered more patents from reexamination in the past two years than any other law firm. The group routinely recovers patent portfolios made subject to post issuance disputes as a result of high-profile, concurrent litigation valued at hundreds of millions of dollars.

The group’s practice embraces all aspects of United States Patent and Trademark Office (USPTO) post-issuance proceedings. Such proceedings include ex parte and inter partes patent reexamination and patent reissue, as well as related appeals to the USPTO Patent Trial and Appeal Board (PTAB) and beyond. The group has handled in excess of 300 reexaminations, representing both patent owners and third-party reexamination requesters. The group’s unparalleled post-grant expertise is leveraged to favorably conclude reexaminations/reissues in our clients’ favor.

Strategic Use of Reexamination/Reissue as a Litigation Tool

Working collaboratively with our litigation team, as well as outside counsel, our team is skilled at addressing the challenges faced in reexamination and reissue cases that often arise concurrently with litigation. Our practitioners develop strategies that often result in stayed litigation pending resolution of reexaminations, decreased damage exposure, improved claim construction and non-infringement postures, as well as improvement of the overall settlement and dispute resolution prospects.

Additionally, the group is often called upon to defend validity or advocate invalidity of patents that are subject to high-profile litigation disputes. We counsel clients on the offensive and defensive use of reexamination to advance their business goals, guiding them on ways to use the reexamination process to strengthen their patents' validity prior to litigation or to preempt attacks on their patents. 

Post Grant Patent Proceedings Representative Matters

Oblon Spivak's post grant patent attorneys have the diverse scientific and technical backgrounds necessary to understand the complex multi-disciplinary technologies and advance issues before senior-level Patent Examiners. Our attorneys are skilled at protecting and asserting patent interests in areas that are particularly vulnerable to challenges by non-practicing entities, including telecommunications, electronics, and information technologies innovations. In addition, we have expertise in a wide range of fields including biotechnology, medical devices, chemistry, communications, wind turbine technology, global positioning systems (GPS) systems, disk drive technology, electrical and mechanical arts, pharmaceuticals, and software. Many of our attorneys hold advanced scientific degrees, have worked extensively in industry, and/or held high positions within the USPTO.

Representative matters include:

On our Patents Post Grant Legal Blog we share insights and commentary on the complex array of existing and proposed post-grant issues, observed trends, practice tips and news relating to patent reexamination, reissue and congressionally proposed opposition systems. Below are the recent posts from that blog. To visit the blog and see all the posts, go to www.patentspostgrant.com.