Post-Grant Practice

McAndrews’ post-grant practice provides clients with a unique combination of capabilities, experience, strategic insights, and hands-on expertise that delivers highly effective solutions in the post-grant trials created by the America Invents Act (AIA) in 2011. The passage of the act created new, expedited procedures for challenging patents, and it posed new challenges for defending them. These changes drastically altered the patent litigation landscape.

Few firms bring to the post-grant landscape the assets McAndrews does, making it a leading choice for clients seeking to protect high-value IP rights and defend key interests in increasingly competitive markets. For decades, McAndrews attorneys have litigated the proceedings upon which the AIA challenges were modeled – patent interference litigation – at the Patent Trial and Appeal Board. Because patent interference procedure evolved into the current AIA-driven dispute system, it was in many important respects very similar to current post-grant practice. Most notably, patent interference litigation was a highly specialized practice, with a limited bar and only a few firms developing any significant experience in its practice and procedures.

McAndrews is among those few. Our attorneys had an existing store of experience in Patent Office litigation, and when the AIA became law we were able to hit the ground running in what was, for almost every other firm, a brand-new area of specialization. We offer clients the unique advantage of a track record that long precedes the development of AIA post-grant practice; a foundation that informs and supports our work. Very few firms can match the combination of technical knowledge and litigation expertise we bring to our post-grant practice.

Similarly, few can match our level of experience under the new regime. We have litigated hundreds of post-grant matters. Post-grant practice is highly specialized and demands expertise in procedures that differ widely from other IP forums. Filings are highly technical, and the Administrative Patent Judges who decide post-grant cases are – unlike U.S. district court judges – technically and scientifically trained. Procedures are different and much faster than in patent infringement litigation. Evidentiary rules are different. Even oral argument is different. The attorneys of our post-grant team have broad and deep experience in this specialized forum and the track record to prove it.

McAndrews clients benefit from the depth of our post-grant team in myriad ways. We are uniquely able to develop cost-effective and pragmatic post-grant strategies for either protecting or challenging patents. We excel at crafting long-term strategies for managing patent portfolios in this unique legal environment, and we are particularly skilled at arriving at innovative approaches to resolution of matters quickly and definitively. And, to return to our original point, our long history with both the post-grant bench and bar allows us to be highly credible, and most importantly, effective, advocates for our clients in this new, critically important venue.

"I want to congratulate you and your team for an outstanding job in presenting our case. It was obvious that your preparedness and dedication to all aspects of our case will help carry the day. Thanks for a job well done."

Patent Counsel