USPTO Contested Proceedings

The sweeping reform to the U.S. patent system made by the America Invents Act (“AIA”) brought closer alignment between patent prosecution and patent litigation. The AIA added several trial-like review proceedings that significantly increase the opportunities for challenging or enhancing the strength of a U.S. patent. Contested proceedings are held before a Patent Trial and Appeals Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”), and include inter partes review (“IPR”), post-grant review, derivation proceedings, and review of covered business method (“CBM”) patents.

USPTO contested proceedings share many similarities with litigation, including the use of technical expert witnesses, opportunities for document discovery, depositions, motion practice, and sanctions. Consequently, effective use of the new proceedings, whether to defend a client’s patents or challenge a competitor’s, requires a sophisticated mix of USPTO and patent litigation experience. Blank Rome is one of the few firms with deep experience in both patent litigation and USPTO procedures.

Many USPTO contested proceedings involve battles of technical experts, with outcomes largely hinging on the insights they share during the exchange of declarations and discovery. Blank Rome attorneys have decades of combined experience working with technical expert witnesses and preparing them for deposition and trial. The Firm’s dedicated IP attorneys—many with substantial first-chair trial experience—have a long history of success in resolving complex, high-stakes cases for patent owner plaintiffs and defendants. These strengths are complemented by our robust patent prosecution capabilities in all technologies and industries.

Many Blank Rome IP attorneys are registered to practice before the USPTO, a key requirement of lead counsel in USPTO contested proceedings, and many of these attorneys have also worked as patent examiners at the USPTO. Our IP attorneys have handled more than 150 trials, 100 USPTO reexamination proceedings, and 70 USPTO interference proceedings.