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OVERVIEW

The America Invents Act (AIA) introduced new procedures for challenging the validity of a patent. Since its inception, these procedures have drastically altered the patent litigation landscape and are becoming increasingly common in high-value disputes.

With one of the largest and most distinguished intellectual property legal teams in the United States, Perkins Coie routinely advises clients looking to the AIA’s new post-grant procedures for protecting their own patents or challenging another’s patents. As forerunners and thought-leaders in this developing legal area, Perkins Coie offers an experienced, full-service legal and technical team that can guide clients through this evolving landscape. Perkins Coie is consistently ranked among the top ten law firms for preparing and prosecuting the highest quality patents by Intellectual Asset Management (IAM) magazine, and 30 of our attorneys were recognized by IAM as best in class patent professionals.

Graphic related to Perkins Coie's technical capabilities Perkins Coie’s post-grant team distinctively combines our extensive patent litigation experience and Federal Circuit appellate practice with our comprehensive patent prosecution capabilities before the USPTO. Very few other AmLaw 100 firms can match Perkins Coie blend of patent prosecution and litigation. This unique arrangement provides our clients with strategic advantages and guidance in developing pragmatic and cost-conscious IPR strategies. In particular, we excel at identifying unique methods for achieving successful resolutions and cultivating innovative ideas for managing long-term patent strategies. Importantly, our deep technical bench is unparalleled - we staff matters with professionals who have the exact technical experience and subject authority to handle the matter.

To date, we have handled more than 200 inter partes review, covered business and post grant review method proceedings for industry-leading clients, including Google, Microsoft, HTC, Intel, Starbucks and Adobe, among others.

Post-grant proceedings are often viewed as a strategic alternative to federal litigation.  Some distinctive aspects of post-grant proceedings include the following:

  • Speed: Post-grant proceedings are much faster than any other federal court venue with a final written decision issued within 18 months.
  • Expertise: The proceedings are adjudicated before a technically savvy panel of at least three judges at the USPTO.
  • Standard of Proof: The burden of proving invalidity before the USPTO is lower than the burden of proving invalidity in a federal court.
  • Scope:  The claims are construed more broadly by the USPTO, making the patent easier to invalidate. 

While these proceedings are directed to invalidating patent claims, they contain features typically found in traditional patent litigation, including discovery and depositions. These hybrid proceedings require comprehensive patent knowledge, renowned trial skills and ample experience before the USPTO, all of which Perkins Coie’s IP practitioners offer.

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