Covington’s patent attorneys have extensive experience advising clients on the strategies and options available to both patent owners and third party requesters in post-issuance proceedings before the United States Patent & Trademark Office (PTO), as well as patent offices throughout the world. Our attorneys specialize in conducting post-issuance proceedings in the context of concurrent patent litigation in a broad array of technologies including computer, electronic, pharmaceutical, biotechnology, life science and chemical industries, to name just a few. Covington’s depth of experience in navigating post-issuance proceedings places it in a unique position as the new post-issuance proceedings made available under the America Invents Act are implemented by the PTO.
These proceedings include:
- Inter Partes Review;
- Post Grant Review;
- Derivation Proceedings;
- Supplemental Examination;
- Transitional Program for Covered Business Method Patents; and
- Ex Parte Reexamination
A key component of Covington’s approach to post-issuance proceedings is close collaboration and integration with our patent litigation teams, always with the goal of working towards the best litigation and business solution for our clients.
Representative Matters
- Representation of Alkermes, Inc., the top patent owner of Orange Book listed patents in reexamination, in ex parte reexamination proceedings and worldwide opposition proceedings initiated by competitors. Six of the seven patents successfully emerged from reexamination and remain listable for the VIVITROL® and RISPERDAL® CONSTA® products.
- Representation of multiple requesters, including The New York Times Company and CBS Interactive, in six inter partes reexamination proceedings and one inter partes review proceeding relating to patents held by Helferich Patent Licensing, LLC. The patents relate to cell phone messaging and are the subject of co-pending litigation in which the requesters are defendants. All of the inter partes reexamination requests have been granted, and all requested claims rejected. A filing date has been granted in the recently filed inter partes review proceeding.
- On behalf of Osmose, representation and advising in inter partes reexamination in the United States, and post-grant opposition proceedings involving its patents and applications in Europe, Australia and New Zealand, including the defense of Osmose patents drawn to methods of preserving wood using particulate copper and methods for directly producing copper carbonate.
- On behalf of a major pharmaceutical company, Covington prepared and filed requests for inter partes reexamination of three patents directed to methods of evaluating and improving safety of vaccine immunization schedules. The patents have been the subject of Federal Circuit and Supreme Court review relating to patent subject matter eligibility, and the case is now back in the District Court for a determination of the remaining validity and infringement issues. All three requests have been granted, and all claims for which reexamination was requested have been rejected.
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