The new law makes inter partes post-grant proceedings easier to file and perhaps easier to win. Well before the new law, however, we were successfully prosecuting inter partes proceedings.
For example, over a decade ago, the world’s largest manufacturer of diabetes drugs wanted freedom to operate for a new dosage form. A patent with several potentially problematic claims stood in the way. Obtaining personal jurisdiction for a Declaratory Judgment action was complicated by the fact that the legal title of the patent was owned by a State government. We thus used an inter partes proceeding to contest the problematic legal claims.
The case came out better than we’d even asked for: the Patent Office found invalid each of the problematic legal claims, and all the other legal claims as well. Underscoring the quality of the Request, the Patent Office maintained its rejections through half a dozen attempts to reverse them.
Our long experience in inter partes proceedings enables us to precisely calculate the investment required for this type of proceeding, from preparing the initial filing to arguing a Federal Circuit appeal. To find out the investment required for your case, contact us.