Patent Reexamination and Inter-Partes Review (IPR)

Inter Partes Review (IPR) is the most popular of the new post-grant proceedings implemented under the America Invents Act (AIA). MKW has an active IPR practice and has served as lead counsel in several IPR trials at the Patent Trials and Appeals Board (PTAB).

• Keys to effective IPR advocacy: An IPR is a condensed version of validity litigation with some USPTO twists. Successful IPR attorneys must conduct sharp prior art analysis and effective expert discovery and then clearly present the case in briefs and oral hearings to the PTAB. And this must all be done on a highly compressed schedule.
• Why MKW: MKW’s blend of patent prosecution and litigation expertise makes it uniquely suited to handle IPRs effectively. MKW’s IPR attorneys combine decades of experience in challenging and defending patents in the USPTO and in the courts. We are particularly effective at working with technical experts to efficiently develop and present the case at the PTAB.

Covered Business Method Review: Covered Business Method Review (CBMR) is procedurally similar to IPR once it is instituted. However, it is available only for particular types of patents covering financial products or services. And, unlike an IPR, which can be based only on prior art challenges to validity, CBMR can be based on any potential grounds for challenging validity. Most notably, CBMR can be based on issues of patentable subject matter under 35 U.S.C. § 101. MKW attorneys have extensive experiences litigating and prosecuting 101 issues, including arguing 101 issues before the PTAB and the Federal Circuit.

Post Grant Review: Post Grant Review is available for newly issued patents and, like CBMR, it allows for challenging validity based on any ground, not just based on prior art. Although it includes similar procedural steps to an IPR, it is conducted on a more condensed schedule. Effective Post Grant Review advocacy requires all the same skills and experience demanded by IPR practice and it especially requires an agile, efficient firm that can work on a fast schedule.

MKW’s team includes more than ten attorneys proficient in the unique combination of skills and experience needed for effective IPR/CMBR/Post Grant Review practice. With such a large team in the context of a smaller firm, MKW is uniquely suited to offer an effective and affordable solution to any of these new post-AIA proceedings.

Ex Parte Reexamation: MKW attorneys have used Ex Parte Reexamation to successfully challenge patents on behalf of patent defendants and to improve patents for patent holders. Because the party filing a request for Ex Parte Reexamination cannot participate in the proceedings after the initial filing, it is particularly important that the requester take a thorough and thoughtful approach to identifying the best available prior art references and preparing cogent arguments to support the request. MKW’s unique blend of experience in challenging patents in the courts and prosecuting and challenging patents in the USPTO allows it to handle Ex Parte Examination requests with the necessary care and expertise to deliver results.