Applying for, prosecuting, and obtaining issuance of a patent is often not the end of that patent’s story. A patent owner may wish to make a correction, or an accused infringer may challenge validity.

It is no simple matter to capitalize on the options available at the US Patent and Trademark Office (USPTO) for review of an issued patent, but Hunton’s patent team has a long history of helping clients navigate the sometimes arcane procedures of the USPTO. We are routinely recognized in publications such as Managing Intellectual Property, Legal 500, and IAM Patent.

Our depth enables us to provide tactical counseling so that clients reach their goals, in conjunction with—or as an alternative to—litigation. Our lawyers have extensive hands-on experience handling post-grant proceedings and advising clients on all aspects of USPTO practice. We understand the differing standards of proof, procedures, and the impact of estoppel positions.

Post-grant proceedings at the USPTO fall into two categories, and we are experienced in both. 

Patent Examiner Proceedings

• Ex Parte Reexamination, for challenging the patentability of patent claims for lack of novelty or for obviousness.
• Reissue, for correcting a mistake in a patent.

Patent Trial and Appeal Board (PTAB) Trial Proceedings

• Inter Partes Review (IPR), for challenging the patentability of patent claims for lack of novelty or for obviousness.
• Post-Grant Review (PGR), for challenging the patentability of patent claims within the first nine months of a patent’s issuance, for lack of novelty, obviousness, lack of patentable subject matter, lack of definiteness, or insufficient written description.
• Covered Business Method Review (CBM), for challenging the patentability of patent claims of certain business method patents, for the same reasons as in PGRs.
• Derivations, for alleging that the alleged inventor of a patent derived the invention from the true inventor.

We help you select the right proceeding, submit an effective petition, and seek to quickly resolve disputed validity issues. We work closely with our clients across a wide variety of industries, including material sciences and mechanical arts, cutting-edge computer, electronic and automotive fields, and pharmaceuticals and biotechnology. And we know both sides of the aisle—representing those seeking to challenge validity of third party patents, as well as patent owners defending against validity attacks to secure stronger patents. Whether you want to maximize the value of your patents or maintain a purely defensive posture, we can assist.