Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

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PTAB And Post Issuance Practice

Whether you are a patent holder or an accused infringer, it is important to your business that over the past decade the Patent Trial and Appeal Board (PTAB) post-issuance practice before the U.S. Patent and Trademark Office has grown significantly. 

With the advent of the America Invents Act in September 2011, the role of post-issuance and third party proceedings becomes even more important. A number of relatively new post-issuance proceedings, including Post-Grant Review (PRG), Inter Partes Review (IPR), Transitional Post-Grant Review for Covered Business Methods (CBM).   For more information on these proceedings see our Practice Note for Practical Law, Charles R. Macedo and Jung Hahm, Understanding PTAB Trials: Key Milestones In IPR, PGR And CBM Proceedings (last revised October 18, 2018).

There are strategic benefits and risks for each of these procedures both for Petitioners and Patent Owners.  Our attorneys closely track and report on important developments with PTAB practice and offer clients our unique perspective and important developments.

Now more than ever, many litigations involve parallel proceedings within the patent office, and many patent application result in appeals.   It is extremely important to make sure that your representatives before the Patent Office are not only experienced patent practitioners licensed to practice before the Patent Office, but also have the litigation savvy necessary for the new form of adversarial proceedings and related strategic advice.

Our attorneys are prepared to assist you in pursuing the right strategy under the new procedures to get you results. Our firm offers the unique qualifications that only a top-notch patent boutique can provide, attorneys with litigation and complex licensing experience, prosecution experience and deep technical skills. Our firm has over twenty attorneys who are registered to practice before the U.S. Patent and Trademark Office and over ninety percent of our attorneys have technical degrees. Our attorneys also have the significant trial and appellate experience that will be needed to win and protect on appeal those wins from these new PTAB proceedings.


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