Patent validity challenges before the Patent Trials and Appeals Board (PTAB) are a less costly and faster alternative to the U.S. district courts or U.S. International Trade Commission (ITC). With a long history of successes, Polsinelli has built one of the nation’s most experienced PTAB practices.

Polsinelli’s post-grant team has hundreds of successfully managed PTAB matters and reexaminations under their belt. Our dedicated team of seasoned patent litigators and patent prosecutors adopts an integrated approach, seamlessly collaborating between litigation and prosecution teams to navigate the complexities of PTAB proceedings with precision and provide comprehensive representation. Polsinelli’s strategic business focus is on developing practical solutions that support market leadership and commercial objectives.

Comprehensive Counsel for Petitioners and Patent Owners

At Polsinelli, we recognize post-grant proceedings as a crucial component of a company’s broader intellectual property (IP) and business strategy. Our team develops tailored approaches for both petitioners seeking to neutralize patent threats and patent owners aiming to strengthen their critical IP assets. Each engagement is carefully aligned with the client’s commercial and litigation objectives, focusing on:

  • Preserving or Expanding Market Position: Safeguarding patents that drive revenue, support key product lines, and maintain a competitive edge.
  • Optimizing Claim Construction and Non-Infringement Strategies: Crafting precise, technically sound arguments and amendments that align with broader legal and commercial considerations.
  • Proactive Risk Management: Assessing vulnerabilities in patent portfolios to minimize litigation exposure and protect strategic research and development (R&D) investments.
  • Leveraging Post-Grant Strategies to Facilitate Settlements and Dispute Resolution: Utilizing PTAB insights to inform negotiations, streamline co-pending litigation, and enhance overall bargaining positions.

Polsinelli’s post-grant strategies seamlessly integrate with broader legal and business objectives, ensuring every move before the PTAB or Central Reexamination Unit advances your core goals, whether defending a cornerstone portfolio or challenging a competitor’s overbroad claims.

Seamless Coordination with District Court and ITC Actions

Polsinelli’s post-grant team collaborates closely with litigation counsel, creating a cohesive strategy across District Court and ITC proceedings.

  • Petitioners leverage PTAB proceedings to challenge patent validity in a specialized forum, potentially narrowing issues and reducing liability in parallel litigation.
  • Patent owners reinforce the strength of their claims, refine claim construction, and maintain momentum across multiple venues to safeguard market share.

By synchronizing tactics across every forum, Polsinelli preserves consistent positions, enhances litigation efficiency, and maximizes your competitive advantage.

Experience Across Post-Grant Forums and Reexaminations

Polsinelli guides clients through a comprehensive range of post-grant proceedings, including:

  • Inter Partes Review (IPR): Addressing novelty and obviousness challenges under §§102 and 103.
  • Post-Grant Review (PGR): Offering broad-based validity challenges within nine months of patent issuance.
  • Ex Parte Reexaminations: Providing additional avenues to confirm or dispute patent validity and alter claim scope.

Unmatched Technical and Legal Depth

Polsinelli’s team comprises professionals with advanced and doctorate degrees in diverse technical fields, from biotechnology and pharmaceuticals to engineering and software. This comprehensive knowledge base enables us to:

  • Develop persuasive petitions and responses grounded in rigorous technical analysis.
  • Adapt swiftly to evolving PTAB procedures, case law, industry changes, and other relevant developments.
  • Coordinate effectively between post-grant matters, litigation, and licensing to support each client’s broader business objectives.

Why Choose Polsinelli?

Having successfully handled hundreds of PTAB matters and reexaminations before the Central Reexamination Unit (CRU), Polsinelli stands as one of the nation’s most experienced post-grant practices. Clients across various industries rely on Polsinelli’s post-grant team for clear, strategic counsel and proven results. Reach out to our dedicated post-grant attorneys to safeguard your intellectual property and propel your business forward.

For more information about PTAB proceedings, click here.  

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USPTO Introduces New Pre-Order Procedure for Substantial New Question Determinations in Ex Parte Reexamination
Key Takeaways The USPTO will allow patent owners to file a 30-page pre-order paper before the Office decides whether a reexamination request raises a substantial new question of patentability, effective for requests filed on or after April 5, 2026.  The procedure gives patent owners an earlier chance to influence the SNQ determination, while allowing requesters to respond under a broad standard. Patent owners should quickly assess whether a pre-order submission is warranted based on the patent’s importance and the strength of the request. Early coordination with counsel is critical to meet the deadline and prepare a focused response. The USPTO will now allow patent owners a limited, front-end opportunity to weigh in before the Office decides whether a reexamination request raises a substantial new
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USPTO Expands PTAB Discretion to U.S. Manufacturing and Small Business
Key Takeaways The USPTO has formally expanded its discretionary framework. As of March 11, the Director will consider U.S. manufacturing footprint and small business status when deciding whether to institute IPR and PGR proceedings, for cases where the patent owner’s discretionary brief deadline has not yet passed. The Director is now weighing domestic investment and supply chain footprint, a shift that embeds real-economy policy considerations into institution decisions and could influence close cases. Petitioners and patent owners alike should build an early evidentiary record on U.S. manufacturing activity and small business eligibility and integrate those facts into their overall discretionary narrative. USPTO Director John A. Squires issued a short policy memorandum on March 11 adding U.S. manufacturing footprint and small business status as explicit considerations in
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