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Brinks' Post-Grant Patent Practice Group Assists Clients With Expedited Review at USPTO
April 07, 2014

CHICAGO—In response to the sweeping changes to post-grant proceedings brought about by the Leahy-Smith America Invents Act (AIA), intellectual property law firm Brinks Gilson & Lione has established a post-grant patent practice group with deeply experienced patent attorneys who are assisting clients with post-grant reviews.

Brinks' newest practice group, which numbers 46 attorneys, counsels clients on patent litigation strategies under the provisions of the Act. Brinks also oversees proceedings before the United States Patent and Trademark Office (USPTO) and the Patent Trial and Appeal Board (PTAB).

The AIA, a federal statute that became effective in 2012, establishes new trial procedures and an accelerated timeline for review of the patentability of issued patents at the USPTO. These procedures include post-grant review (PGR), inter partes review (IPR), and a transitional program for reviewing so-called covered business method patents. Brinks attorneys assist with all these proceedings, as well as ex parte reexaminations, derivations and interferences, and supplemental examination.

Shareholders Kelly K. Burris and Marc V. Richards co-chair the new practice group. Burris, who has practiced law for more than 14 years, is also an aeronautical engineer, a pilot, and a U.S. patent holder in the field of fiber optics. Richards, a chemical engineer by degree and a control systems engineer by training, as well as a widely respected authority on patent-related issues, has more than 20 years of legal experience and has published and presented frequently on the subject of patent law. He formerly chaired the firm’s Reexamination and Interference Practice Group, which is now folded into the new practice group.

'The reforms incorporated into AIA collectively represent the most dramatic change to the U.S. patent system in decades. As one of the largest intellectual property law firms in the United States, Brinks is uniquely positioned to advise clients on post-grant proceedings before the USPTO,' said Richards. 'Simply put, we're specialists in prosecuting and litigating patents, and both skill sets are critical to successful post-grant proceedings.'

Added Burris, 'Post-grant proceedings are an efficient and effective alternative to district court litigation, requiring a lower burden of proof, offering lower costs, and promising faster results. Brinks' lawyers can develop strategies for clients based on the new rules for timing and patent eligibility, so they can realize these benefits quickly.' Burris has previously testified before the U.S. Congress with regard to other legislation involving patent protection and heads Brinks' Detroit office, which is located in the same building as the USPTO’s Detroit Satellite Office.

Brinks recently launched a public web page specifically devoted to post-grant patent practice, to help companies understand the opportunities for challenging or strengthening a patent through a USPTO proceeding, click here to view the web page.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

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