Laurence & Phillips IP Law

Services

POST-GRANT PROCEEDINGS

Members of our team have been counsel collectively in over 80 inter partes reviews and we have a track record of successes on behalf of patent owners and petitioners. Our success comes from several factors. We have maintained an intense focus on understanding the rapidly developing law and trends related to review proceedings since their inception. This understanding guides our strategies on a tactical level and on substantive issues. Also, we have a deep understanding of what will be well received at the U.S. Patent and Trademark Office (USPTO) regarding obviousness, which is critical because most inter partes review proceedings are decided based on obviousness.

In addition to inter partes review (IPR), other post-grant proceedings at the USPTO include post-grant review (PGR), and covered business method (CBM) reviews, reexaminations, reissue applications, supplemental examination and derivation proceedings. Our experience with these various options provides our clients with significant advantages because we are able to consider and deploy an array of options.

Our strategies in post-grant proceedings are guided by the objectives in concurrent litigation. We coordinate closely and collaboratively with litigation counsel while also providing independent guidance to our clients based on the differences between litigation and review proceedings. Ultimately, our choices are guided based on expected outcomes at the Court of Appeals for the Federal Circuit, which so far has been predominately affirmances of decisions by the Patent Trial and Appeal Board.

Our initial success relied on our combined experience with litigation, reexamination, and prosecution, which enabled us to handle all aspects of review proceedings. Our continued focus on review proceedings has enabled us to build on our foundation and to develop a deep level of expertise that contributes to our winning track record. We enjoy using our pioneering experience to guide our clients to the best possible outcomes.

Two members of our team, Kevin Laurence and Matt Phillips, have consistently been recognized as leading practitioners in the United States for post-grant proceedings based on peer reviews by Intellectual Asset Management. They have served as instructors for Patent Resources Group since 2009 in courses on post-grant proceedings and co-author a two-volume treatise titled Post-Grant Patent Practice provided in conjunction with the courses. They have also co-authored numerous articles for Intellectual Property Today magazine on post-grant patent topics and are frequent speakers on topics related to post-grant proceedings.