Patent Office Practice
Finnegan has significant experience in all areas of practice before the U.S. Patent and Trademark Office (USPTO). We are involved at the initial stages of evaluating technology for patentability, drafting and prosecuting patent applications, and analyzing patents for enforcement opportunities. Finnegan is widely recognized as one of the top law firms for handling some of the most complex procedures before the USPTO, such as interferences, ex parte and inter partes reexaminations, and reissues. We also have an established European oppositions practice, defending clients’ patents and helping them establish freedom-to-operate by challenging patents in the European Patent Office (EPO).
Patent Prosecution. Finnegan files approximately 3,000 U.S. and 1,000 foreign patent applications annually. In 2012, nearly 2,100 U.S. patents and more than 300 foreign patents were issued related to our efforts. Nearly three hundred of our professionals are registered to practice before the USPTO, and more than 60 are former patent examiners. They have science and/or engineering backgrounds, and many hold advanced degrees in their technical fields and have similarly worked in industry. Many of our professionals also have litigation experience that enables them to provide the highest quality work by prosecuting applications with an eye toward enforcement.
Interferences and Derivation Proceedings. With the change from a first-to-invent to a first-inventor-to-file system under the America Invents Act (AIA), interferences will be phased out with most new patent applications. A patent interference proceeding, however, is a mechanism to determine which patent applicant is entitled to a patent when two or more applicants are claiming substantially the same invention. Finnegan has one of the most highly regarded interference practices in the United States. Our extensive practice covers all technology disciplines and all degrees of complexity from simple, two-party interferences to more difficult cases involving multiple parties.
For patent applications having an effective filing date on or after March 16, 2013, a new “derivation” proceeding will be available to an inventor who believes that an earlier patent applicant derived the invention without authorization. Although derivation proceedings are new, derivation of an invention has been a potential issue that may rise in an interference context. With Finnegan’s interference experience, we are prepared for those unique instances of derivation.
Reexaminations. Finnegan attorneys have handled more than 250 reexaminations in the past five years. We represent patent holders and third party requesters in inter partes and ex parte proceedings. The technologies at issue span nearly every industry sector, including semiconductors, medical devices, consumer electronics, and business method patents. Our experience includes handling all procedural aspects of a reexamination as well as advising clients on litigation strategies that involve reexaminations as offensive or defensive positions.
Reissues. Patent reissue is a mechanism for correcting errors in a U.S. patent. In the United States, a patent owner may correct an error in a patent if the error renders the patent partially or wholly inoperative or invalid. Patent reissue is a post-issuance correction tool with examination conducted ex parte with the patent owner. Finnegan has handled more than 100 reissue proceedings in the last five years.
Post-Grant Review Proceedings. Under the AIA, there are new trial procedures to request review of the patentability of issued patents outside litigation. These new procedures include post-grant review, inter partes review (replacing inter partes reexamination), and the transitional program for review of covered business method patents. Finnegan was the first law firm to file a petition for post-grant review under the new provisions of the AIA that went into effect on September 16, 2012.
Supplemental Examination. The AIA also gives patent owners the ability to request the USPTO for supplemental examination to consider, reconsider, or correct any information believed to be relevant to a patent. This new procedure, subject to certain statutory limitations, is now available for all U.S. patents.
European Patent Oppositions. Finnegan attorneys are experienced in all aspects of complex and high-value oppositions. We regularly defend clients’ patents, including against multiple opponents, while also helping clients establish freedom-to-operate by challenging patents in the EPO before both the Opposition Division and the Board of Appeals. We represent clients in a variety of industry sectors, and the broad technical expertise of our attorneys allows our opposition teams to draw on experience in just about every technical field. After years of assisting clients in opposition proceedings, Finnegan attorneys understand how to navigate the complex procedures established by the EPO and how to take best advantage of the rules to benefit each client’s unique situation.
The Finnegan Difference. While the AIA brings new proceedings and changes to existing patent office practice, one thing remains the same─Finnegan’s unique perspective. Finnegan’s significant experience in all areas of practice before the USPTO, combined with the firm’s extensive patent litigation experience in district courts, at the U.S. International Trade Commission, and before the Federal Circuit, makes Finnegan uniquely qualified to handle the most complex procedures before the USPTO.