Patent Post-Grant (PTAB, Reexamination, Reissue, Foreign Oppositions)

Post-Grant

After a patent issues, its scope, strength, and enforceability may still be tested, refined, or challenged through a range of post-grant proceedings in the United States and abroad. These proceedings can play an important role in patent strategy, whether the goal is to defend a valuable patent, challenge a competitor’s rights, correct issues in an issued patent, or create leverage in a dispute, transaction, or licensing discussion. They may also intersect with litigation, licensing, portfolio management, due diligence, freedom-to-operate questions, and competitive positioning.

Leason Ellis helps clients assess both the merits of a particular proceeding and how it fits into a broader patent strategy. We consider the strength of the patent, the available procedural tools, the surrounding legal and competitive landscape, and the commercial significance of the rights at issue. Our approach is practical and strategic, with close attention to timing, cost, risk, and business objectives.

PTAB Proceedings

Proceedings before the Patent Trial and Appeal Board can provide powerful mechanisms for challenging or defending issued patents. These matters often involve complex questions of validity, claim scope, prior art, and procedure, and they can have significant implications for enforcement, licensing, settlement, and competitive positioning.

Leason Ellis represents clients in PTAB proceedings, including inter partes review (IPR) and post-grant review (PGR). We advise on whether to initiate a challenge, how to respond when a patent is under attack, and how PTAB strategy should align with related litigation, licensing, or business objectives. Our work includes analyzing prior art, developing petition and response strategies, coordinating expert support, and guiding clients through the issues that can shape the outcome of the proceeding.

While IPR and PGR are the most commonly pursued adversarial routes, ex parte reexamination offers a distinct mechanism for challenging or strengthening issued patents through the U.S. Patent and Trademark Office. It can serve as a preemptive tool ahead of potential litigation, a strategic response when a patent’s validity is at issue, or an offensive measure against a competitor’s rights. Leason Ellis advises clients on whether reexamination is appropriate, how to develop and submit persuasive positions, and how the proceeding fits within a broader litigation, licensing, or portfolio strategy. We also assist foreign counsel and other IP firms whose clients require U.S. reexamination support as part of a coordinated international dispute or clearance strategy.

Reissue

Reissue is a post-grant mechanism available exclusively to patent owners who need to correct errors, clarify claim scope, or strengthen a patent in light of evolving commercial or competitive circumstances. When filed within two years of issuance, reissue can also be used to broaden claims. It is a powerful tool when used deliberately, but one that requires careful evaluation of timing, risk, and strategic fit.

Leason Ellis counsels patent owners on whether reissue is the right strategic option and how it compares with alternatives such as continuation practice, reexamination, or other post-grant proceedings. We advise on identifying correctable issues, managing risks such as intervening rights, and crafting reissue strategies that align with enforcement, licensing, and portfolio objectives. Our approach is practical and business-focused, helping clients use reissue proceedings deliberately to enhance the long-term value and strength of their patent assets.

Foreign Oppositions and Related Validity Challenges

Patent rights are often global, and a post-grant strategy may need to extend beyond the United States. In many jurisdictions, issued patents may be challenged through opposition proceedings or similar validity mechanisms that can affect the scope, strength, or survival of key rights in important markets.

Leason Ellis advises clients on foreign oppositions and related post-grant validity challenges as part of coordinated international patent strategies. We work with clients and foreign counsel to evaluate risks, develop positions, and manage proceedings in a way that aligns with broader portfolio, enforcement, and market objectives.