We represent companies in fighting weak patents and protecting their intellectual property through formal opposition processes under US patent law.
Pre-Issuance Submission
One of the most aggressive strategies for patent opposition is the Pre-Issuance Submission. In the event of a competitor's patent application posing a threat to your company, we are able to submit a third-party submission with pertinent prior art. This enables us to establish evidence in advance before the granting of the patent, showing that the claimed invention is not new or obvious in view of existing art. Our agents thoroughly review pending applications, determine key weaknesses and gather strong prior art references to make timely submissions. This early action prevents companies from being saddled with licensing requirements and expensive infringement litigation.
Post-Grant Review
For already-granted patents, Post-Grant Review (PGR) provides a chance to challenge validity within the first nine months of grant. This process provides objections on several grounds such as lack of novelty, obviousness and patent ineligibility. Our legal professionals help prepare petitions that put forth technical and legal arguments in front of the Patent Trial and Appeal Board (PTAB). Through PGR, companies are able to quickly invalidate weak patents that could become a threat to their operations.
Inter Partes Review
When the nine-month window for PGR has passed, Inter Partes Review (IPR) becomes the preferred method for challenging patents based on prior patents or printed publications. IPR is particularly useful for contesting patents on the grounds of novelty and obviousness. Our team conducts in-depth prior art searches, formulates strong legal arguments and advocates aggressively before the PTAB. As a less expensive substitute for patent litigation, IPR allows companies to challenge patents effectively without resorting to protracted court fights.
Ex-Parte Re-examination
For clients who want a less aggressive option, Ex-Parte Re-examination offers a substitute for direct opposition. This procedure enables a third party to file prior art with the USPTO and ask for a re-examination of the issued patent. In contrast to IPR and PGR, ex parte re-examinations are not adversarial, as only the USPTO examiner and the patent holder are involved. It is thus a tactical choice for companies seeking to invalidate a competitor's patent without resorting to public litigation. Our attorneys carefully draft re-examination requests so that they make strong prior art arguments challenging the validity of the patent while exposing our clients to minimal risk.