Many attorneys in Duane Morris’ heralded Patent Practice utilize their combination of extensive trial experience as lead counsel in litigation before state and federal courts, as well as unique trial experience within the U.S. Patent and Trademark Office (USPTO), to help clients take advantage of, and respond to, inter partes review (IPR). (Introduced by the America Invents Act (AIA) in 2012, IPR allows a petitioner to challenge the propriety of a patent claim after it has been granted by the USPTO. This increasingly important strategy—a majority of filings at the USPTO are currently in parallel litigation—is viewed as a less costly and more expeditious method than filing a litigation proceeding in federal district court. Filing for IPR may also provide leverage in settlement negotiations.)
Duane Morris attorneys advise clients on the merits and desirability of instituting parallel proceedings before the USPTO as well as with regard to defending their patents during these proceedings. Understanding the importance of this area, the firm has established a group focused on the specifics of IPR practice comprised of attorneys with extensive procedural, technical and litigation experience, as well as oral advocacy skills, required to approach the specialized area with the best possible team. From early strategizing to working with experts, through declarations, depositions and cross examination, to presenting an invalidity case at a hearing in front of the Patent Trial and Appeal Board (PTAB), Duane Morris offers clients experience that is invaluable.
Duane Morris has represented clients in a wide range of technology and life sciences areas, including Hatch-Waxman matters, as IPR remains a viable option for generic drug companies to challenge asserted patent claims.