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A Strategy Primer for the New Post-Issuance Patent Office Proceedings

By Jonathan R. Sick of McAndrews, Held & Malloy

Jonathan R. Sick is a shareholder at McAndrews, Held & Malloy, where he assists clients on a variety of intellectual property matters including post-issuance proceedings and strategies associated with those proceedings.  Jonathan can be contacted by phone at (312) 775-8196, or by e-mail at

Among the many changes brought about by the America Invents Act, the new post-issuance trial procedures - namely Post-Grant Review (PGR) and Inter Partes Review (IPR) - have received significant attention. These new proceedings bring with them the promise of improved patent quality, experienced judicial oversight, speedy resolutions, and a less expensive alternative to district court litigation. The rules for the proceedings are far from simple, however, and, to many, the thought of navigating one of them is daunting. And while it’s one thing to read the rules, it’s quite another to appreciate the strategic implications of the various choices you will make both prior to and throughout these trial proceedings. The purpose of this article is to point out some basic strategic considerations for both the third-party petitioners who will file these proceedings and the patent owners who will defend them.

First a few basics. Both PGR...

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