Post-Grant

Inter Partes Review

Inter partes review (IPR) was introduced by the America Invents Act (AIA) as a counterpart to post-grant review. Together, they collectively replace inter partes reexamination with inter partes review, becoming available only after the period for post-grant review has passed. IPR enables a third party to challenge one or more claims in an issued patent at the United States Patent & Trademark Office. IPR was designed to replace inter partes reexamination practice. IPR was introduced by the America Invents Act (AIA) as a counterpart to post-grant review. Together, they collectively replace inter partes reexamination with inter partes review, becoming available only after the period for post-grant review has passed. IPR is a way challenge the validity of patent claims based on patents and printed publications. IPR can be initiated immediately following issuance (or reissuance) of patents examined under the first to invent rules (i.e., patents filed prior to March 16, 2013), since post-grant review is not available for these patents. For patents examined under the AIA first to file rules (i.e., patents filed on or after March 16, 2013), IPR can be initiated after the nine-month window of eligibility for post-grant review.

Covered Business Method

The purpose of a covered business method patent review is to provide a separate vehicle for accused infringers to challenge certain types of business method patents while providing an alternative to costly litigation in courts. This review mostly follows the procedures for post-grant review, with main differences including grounds for standing, timing, and prior art requirements, along with unique stay and estoppel provisions. CBM review is similar to post-grant review, but there are notable differences between the two. For example, only a party charged with infringement of a CBM patent can initiate a CBM challenge, although under the final rules, a party that has been served a cease and desist letter is likely to be considered to have been charged with infringement for purposes of petitioning for post-grant review of a CBM patent. Additionally, CBM review can be filed only when post-grant review is unavailable (e.g., nine months after issuance). And the prior art available for CBM review of a patent granted under the first-to-invent rules (i.e., patents filed prior to March 16, 2013) is limited to that defined in section 18(a)(1)(C) of the America Invents Act. CBM review also includes unique estoppel provisions that are less extensive than post-grant review. Specifically, estoppel under CBM review extends only to grounds actually asserted but not to grounds that reasonably could have been asserted.

Ex Parte Reexamination

A request for ex parte reexamination may be filed anonymously by any party, including the patent owner, at any time during period of enforceability of a patent. A reexamination will commence only if the request raises at least one substantial new question of patentability on the basis of patents and printed publications.

Supplemental Examination

Supplemental examination allows a patent owner (only) to ask the USPTO to consider, reconsider, or correct any information the patent owner considers to be relevant to the patent. It was introduced by the America Invents Act (AIA), and became available on September 16, 2012

Licensing

Agreements affecting intellectual property assets are critical to the underlying value of those assets. Licensing involves the strategic transfer of rights in proprietary technologies. The long-term viability of virtually every technology company is determined largely by how effectively it protects and leverages its intellectual property. Great intellectual property can be diminished through agreements of poor quality. A thorough understanding of both the particular technology at issue in a transaction and the legal framework governing the transfer of rights in that technology is critical to a successful deal. The relative value of any intellectual property can be enhanced through thoughtful and effective agreements. At Vector IP, we understand this. One of the things that differentiates us is the knowledge held by our IP professionals. We understand your technologies and business strategies as well as the competitive environment in which you operate. We are well-versed in both intellectual property law and transactional law, which is the language of technology transfer agreements. We are adept at working to develop strategies for exploiting technologies and for navigating the myriad legal and technological issues that arise in drafting and negotiating agreements involving technology transfer. Our licensing professionals provide world-class strategic assistance with licensing and technology agreements via a unique combination of skill sets: a deep understanding of the underlying technology, significant business acumen, and a thorough understanding of the applicable legal principles.

Strategic Advice

We partner with our clients to create, develop, as well as improve programs that maximize their IP protection, and we help with auditing existing processes. These processes can address identifying inventions to patent as well as drafting agreements to protect what traditional intellectual property rights may not protect. We enjoy supporting general counsels and other executives who do not specialize in intellectual property and want a trusted advisor with whom they can learn how to make and communicate intellectual property-based decisions. We support you in presenting to your executive team on IP issues and are there to provide a sanity check on the decisions you have to make quickly. We also assist with your issues from first contact, pre-litigation, and licensing through supervision and sanity checks throughout litigation to help identify opportunities to lower cost or develop an exit strategy.

Due Diligence

Businesses interested acquiring intellectual property assets, licensing, or participating in mergers and acquisitions often conduct IP due diligence prior to the transaction. We tailor our IP due diligence review of the asset to meet your needs, depending on the nature of the transaction. Once your IP is protected, you may need to communicate its value to others. You may also need to understand the value of your competitors’ IP. We can also help ascertain the strength of IP portfolios. We know the ins and outs of presenting the strengths of your IP to investors, board members, and opposing companies.

Litigation

Our litigation practice covers all aspects of IP disputes, from complex patent litigation and appeals to trademark and domain name disputes. We bring strategic vision, technical understanding, and legal expertise to each matter.

Trademark & Copyright

Our trademark practice includes clearance, prosecution, and maintenance to portfolio management, licensing, watch services, disputes, as well as litigation. We provide a full range of trademark services. We also counsel companies on protecting their copyrights and fair use of third-party copyrighted works. We register copyrights, expedite applications, record documents, and perform title searches. We also render opinions on copyrightability, infringement, fair use, ownership and title, notice, security interests, and foreign protection. We also draft and negotiate agreements involving copyrighted works, including joint-development agreements, licenses, assignments, rights clearance, and distribution agreements.

Opinions

Opinions are an important tool given that the ability to exclude others and freedom to operate are fundamental to the survival of an innovator company. Your intellectual property portfolio is essential to the growth and long-term viability of your company. Opinions are important offensively in determining whether a third party may be infringing the claims of one of your patents. Defensively, opinions can be used to determine whether you, if accused of infringing a third party’s intellectual property rights, can continue business activities without being accused of willful infringement. We help provide you with our opinion regarding intellectual property issues that affect your business, and, when called upon to do so, act on and defend those opinions in litigation. We render opinions regarding freedom-to-operate, non-infringement, invalidity, patentability, and enforceability of patents. Opinions range from formal opinions of counsel, upon which clients have successfully relied at trial, to less formal letter opinions, all of which provide strategic advice to assist you in making critical business decisions.