The America Invents Act of 2012 (“AIA”) created inter partes reviews (“IPR”) and post-grant reviews (“PGR”) to expedite and streamline the patent challenge process. What that really created was a new practice area that combines litigation and prosecution into an adversarial proceeding between parties officiated by administrative law judges of the U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB”). Effective use of IPR or PGR proceedings, whether to defend a client’s patents or challenge a competitor’s, has become an increasingly important strategy.
Like traditional USPTO practice, the practice is very rules based and focused on the technology. But like litigation, success will come through well prepared briefs, well prepared expert reports, strong cross-examination of experts, and good argument skills during a very interactive hearing. So, IPR and PGR are not a purely litigation practice, nor a purely prosecution practice. Clients need a firm that has strength in both areas.
How We Can Help
With more than 50 attorneys registered to practice before the USPTO (a key requirement of lead counsel in USPTO contested proceedings) and more than 90 IPRs under our belt, and more than 430 District Court cases in the past five years, it is not an accident that we have been named among the top 50 IPR firms in the country. Blank Rome’s commitment to having both a strong litigation practice as well as a robust patent prosecution practice makes us particularly well suited to a practice that requires both skills.
What Sets Us Apart
Blank Rome has earned a reputation as one of the top intellectual property law firms in the United States.
- 2017 IPR Intelligence Report (Patexia): Top 50 firm for Inter Partes Reviews
- Top 50 Most Active Law Firms Representing Petitioners
- Top 25 Best Performing Law Firms Representing Patent Owners
- Top 50 Best Performing Law Firms Representing Petitioners
- Top 50 IPR attorney: James Hall
- 2019 Chambers USA: ranked Blank Rome for Intellectual Property in Texas
- 2021 U.S. News & World Report—Best Lawyers® (Woodward/White, Inc.) nationally ranks:
- Copyright Law
- Litigation – Intellectual Property
- Litigation – Patent
- Patent Law
- 2018 IAM Patent 1000 (Globe Business Media Group):
- Texas: highly recommended overall in the prosecution category, and was recognized in the categories of transactions and litigation
- D.C.: recommended in the prosecution and transactions categories, and recognized in the category of litigation
- 2017 Managing IP – IP Stars (Euromoney Institutional Investor PLC): Recommended Intellectual Property Firm – Pennsylvania.