Intellectual Property Litigation

Post-Grant Proceedings at the Patent Office


Post-grant proceedings were put in place by the Leahy-Smith America Invents Act in 2011. The creation of these proceedings allowed for a new way to challenge patents at the Patent Office as opposed to always having to challenge the validity of a patent in a district court. The presenter of this course gives an in-depth look at the post-grant proceeding process and offers insightful tips for navigating the process successfully.

*Mobile Device Compatible


I. The World of Post-Grant Proceedings Under the AIA
    A. What Are Post-Grant Proceedings?
    B. Post-Grant Trials in the News
    C. A Statistical View
    D. The Trials
    E. Post-Grant Review
    F. Derivation Proceedings and Patent Owner Preliminary Response
    G. Instituting Trials
    H. The Trial Process
        1. The First Steps
        2. PTAB Selection and Completion of Trial
    I. Additional Considerations

Content Provided

With influence and presence on both U.S. coasts and abroad, Pillsbury Winthrop Shaw Pittman LLP enjoys an expansive international platform. The firm has 14 offices in global centers for capital markets, energy and technology and provides its clients with the strength of this reach and a commitment to cross-border service and responsiveness. Pillsbury is a leader in its core areas of focus: capital markets and finance, energy, global sourcing, litigation, real estate, technology, life sciences, and communications.

Speaker / Author:

Photo of Patrick Doody

Patrick A. Doody
Pillsbury Winthrop Shaw Pittman LLP

Patrick Doody is a partner in the Pillsbury Winthrop Shaw Pittman LLP's Intellectual Property practice and leader of the USPTO Litigation team. He is also a member of the Medical Devices and Life Sciences teams. He focuses on a broad spectrum of intellectual property matters, providing flexibility and creativity in counseling clients in the pharmaceutical, medical devices, chemical, and biotech technology sectors. Mr. Doody has extensive experience in due diligence matters and regularly counsels clients in licensing and transactional matters, patent prosecution, patent-related opinions, and patent infringement litigation. Mr. Doody has been monitoring the progress of the Leahy-Smith America Invents Act (AIA) and is a frequent speaker on some of the legal and business implications of the new law. He is also a contributor to Pillsbury's America Invents Act Legal Analysis and Resources page.

An experienced patent practitioner, Mr. Doody has litigated patent infringement matters in district courts and before the International Trade Commission. In addition, he is a former patent examiner who frequently handles complex patent prosecution-related matters including inter partes and ex parte reexaminations, reissues, patent interferences, and appeals. Mr. Doody also assists numerous companies in developing strategies for protecting IP assets, and provides assistance to clients in bringing new products to the market.

Mr. Doody has considerable experience conducting due diligence investigations of small and large patent portfolios for acquisitions and licensing. He also creates and negotiates joint development agreements and license agreements involving drugs in clinical trials, trade secrets, proprietary information, software, pending patent applications and issued patents.

His practice encompasses a vast array of technologies, including medical devices, imaging technology, polymers, films, catalyst technology, fuel cells, creating fuels from biomass, industrial manufacturing technologies, cosmetics, pharmaceuticals, and biotechnology.

His career began at the United States Patent and Trademark office in the polymer group, followed by his time as in-house patent counsel at Union Carbide Corporation prior to its acquisition by The Dow Chemical Company. Mr. Doody also practiced with another large multinational general practice law firm as well as with a patent boutique. His experience with this broad cross-section of the patent practice spectrum enables him to fully understand his clients' issues and to team with them to find the most appropriate and efficient solution.

Mr. Doody received his J.D. from George Mason University School of Law in 1992, and his B.S. from Virginia Polytechnic Institute and State University in 1986.


Price (USD)

Standard Rate: $50.00
Subscribers: FREE
Pillsbury U Online: FREE
Metro State Univ: $50.00


Course Code : 775552

Release Date : 01/28/2016

Length : 27min
Recorded Date : 9/17/2015

Format Type : eLearning
Mobile Compatible

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