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Patent Office Litigation  

Petitioners’ Post-Grant Guide Patent Owners’ Post-Grant Guide

Comprehensive Post-Grant Proceedings Summary

Abbreviated Post-Grant Proceedings Summary

In today’s intellectual property landscape, the decision of a Patent Examiner or Trademark Examiner is not always the final say on patentability or registrability. Patents and trademarks can be, and often are, challenged by third parties before the USPTO’s Patent Trial and Appeal Board (PTAB) or Trademark Trial and Appeal Board (TTAB).  The team at Panitch Schwarze is dedicated to crafting effective and efficient solutions for succeeding in these proceedings, as well as ensuring a consistent strategy when co-pending district court litigation is involved.

PTAB Proceedings

When a company has entered a market or is looking to do so, it is not uncommon for that company to challenge the validity of a competitor’s granted patents at the PTAB, either as an alternative to or in parallel with district court litigation. Depending on the types of invalidity arguments that are being presented and the timing of the proceeding in relation to the patent grant date, there are two options available for such challenges: Post Grant Review (PGR) and Inter Partes Review (IPR). Success by the Petitioner in these proceedings helps clear the way for the Petitioner (and others) to enter the market, while success by the Patent Owner helps solidify the validity and increase the value of those patent rights. Our team has extensive experience successfully representing both Petitioners and Patent Owners before the PTAB in these types of proceedings.

Regardless of the type of proceeding, the team at Panitch Schwarze works closely with clients to do a deep dive into the science and relevant prior art to become well-versed in the specific technology that is at the heart of the dispute. By utilizing attorneys and agents with training, and often an advanced degree, in the relevant technology or scientific field, we are able to quickly and efficiently get up to speed on the technological aspects of the case. Further, by focusing our efforts on the important aspects of the case, our approach maximizes results while remaining budget friendly. When assisting Petitioners, we craft efficient grounds for challenging a patent’s claims. When assisting Patent Owners, we exhaust all options for preventing a trial from ever being instituted. Our strategies emphasize winning on the merits, not engaging in irrelevant side arguments that detract from the big picture. Because reversal at the Federal Circuit is difficult, we run our PTAB cases to maximize the chance of success before the Board. Our team’s success spans multiple technologies and industries. We staff our PTAB matters with practitioners steeped in PTAB procedure as well as the right technological background to fit the dispute. For some general information on these PTAB procedures, Panitch Schwarze offers PTAB guides geared towards Petitioners and Patent Owners as well as Comprehensive and Abbreviated post-grant proceeding summaries.

TTAB Proceedings

Opposition and cancellation proceedings before the Trademark Trial and Appeal Board can be an efficient and cost-effective way to protect and enforce your trademark rights. These proceedings provide an avenue to oppose a published application to prevent it from being registered, or to petition to cancel an issued registration. TTAB proceedings focus solely on whether or not a trademark can be registered and stay registered; the TTAB will not issue injunctions nor award monetary damages. For those reasons (and others), TTAB proceedings may be preferred over district court litigation.

The trademark lawyers at Panitch Schwarze have extensive experience successfully guiding their clients through proceedings before the TTAB. We have defended our clients’ trademark rights against third parties who oppose a client’s published application, as well as against those who petition to cancel a client’s issued registration. We also often enforce our clients’ trademark rights by initiating proceedings when a third party’s mark interferes with our clients’ own application or registration.

We work closely with clients to create a comprehensive strategy to protect and enforce their trademark rights, which necessarily includes marketplace and budget considerations. Our team’s depth of knowledge and experience allows us to recommend the best course of action for our clients, including when settlement is appropriate or when a dispute is better suited to district court litigation.

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Panitch Schwarze commits the time to listen to and evaluate each client’s unique needs so we can advise on the best forms of IP protection.