CRK Practice Areas

Post-grant Proceedings

Our attorneys have the expertise to represent you in post-grant proceedings before the United States Patent and Trademark Office (USPTO).

These adversarial proceedings before the USPTO can be a useful, cost-efficient, alternative to patent litigation. Success often requires both an understanding of the rules and procedures that govern the proceeding as well as an in-depth understanding of the technical field of the invention. Using our litigation experience, patent prosecution experience, and technical expertise, our attorneys will leverage our collective efforts to increase your odds of resolving these proceedings favorably.

How CRK can help

Inter Partes Review (IPR)

Upon grant of a petition for IPR, the Patent Trial and Appeal Board (PTAB) will review the patentability of one or more claims in a patent, but only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. The PTAB standard of review for an IPR is reasonable likelihood of invalidity (e.g., in federal court, the standard of review is clear and convincing evidence of invalidity). CRK attorneys develop strategies for asserting patents and defending patents that are involved in IPRs while a companion case is proceeding in Federal District Court. Post-grant proceedings are a hybrid between a patent office examination and a litigation. The post-grant decision makers are technically trained administrative judges. The ideal person to persuade these technically trained judges is a person that is also technically trained, understands the patent office, and understands how the decision makers think and can respond to technical questions, but also the litigation briefing, presentation, and oral argument skills. CRK has the right people with these backgrounds.

Covered Business Method (CBM)

A patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service,” may be reviewed in a CBM proceeding before the PTAB. CRK attorneys have extensive experience with financial service and computer science industries and other areas that are often attacked through the use of the CBM process.

Post Grant Review (PGR)

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may challenge the validity of a granted patent. Broader grounds for invalidity are available as compared to an IPR. Timing is important – petition must be filed after grant, but within 9 months of the grant. Applies only to patent applications filed post-AIA. CRK attorneys have the unique technical, patent office, and litigation experience to develop the right strategy for attacking or defending a patent in a PGR proceeding.