Post Grant Review Overview

A new tool was created by the America Invents Act in Section 6 that allows for third parties to challenge issued patents on almost any grounds. This new proceeding is titled “post-grant review” and is formed by the creation of 35 U.S.C. §§ 321-329. Post-grant review works along with inter partes review to replace inter partes reexamination. It is the broadest post-grant validity challenging method at USPTO with the lowest threshold of proof.

1. Effective September 16, 2012
2. Applies to only AIA patents – filed on or after March 16, 2013
   1. Post-grant review also applies to those business method patents challenged under the transitional program, no matter when those patents issued.
3. Filed by 3P (not patent owner)
4. Any basis to challenge patentability – 282(b)(2) or (3): 101, 102, 103, 112 (except best mode)
   1. This is more broad than for IPR or inter partes reexamination
5. TIMING: File within 9 months of patent grant or reissue; after 9 months, you instead file an IPR
   1. File before petitioner files court action challenging validity
6. PETITION must include:
   1. Fee
   2. ID real parties in interest
   3. ID, in writing, and with particularity:
      1. Each claim challenged
      2. Grounds for each claim’s challenge
      3. Evidence supporting each challenge, including copies of patents/printed publications and affidavits/declarations (e.g., expert opinions)
   4. Any other info the Director requires
   5. Provide copies of all docs to patent owner or his representative (“serve him”)
   6. Petition (to the PTAB) will be available to the public
7. Preliminary response – patent owner has right to file to argue why no PGR should be instituted
   1. Filed w/in 3 months
   2. Can be waived
   3. No new testimony evidence
8. Low threshold to institute – “more likely than not” (preponderance) that at least 1 claim challenged is unpatentable
   1. PTO will decided whether to institute within 3 months of receiving preliminary response
   2. PGR will not be instituted if petitioner already filed court action challenging validity of a claim of that patent
   3. Decision is final and non-appealable
9. Reissue – no PGR if: reissue claim is identical or narrower than original patent, AND can no longer file PGR for original patent
10. If instituted, PTAB will make decision within 1 year (extendable for good cause by 6 mos)
11. Director may consolidate multiple PGRs for a single patent if they are instituted
12. Hearing Procedures:
    1. Conducted in the open (public access) unless sealed (rare)
    2. Some discovery, and possibility of sanctions
13. Amendments by patent owner during IPR – can file 1 motion to:
    1. cancel challenged claims,
    2. propose a reasonable number of substitute claims for each challenged one,
    3. Both parties can agree to change claims to materially advance settlement
14. Burden – petitioner must prove unpatentability by a preponderance of the evidence
15. Related court proceedings:
    1. Automatic stay of civil action filed on or after filing of post-grant review
       1. Counterclaim challenging validity is still allowed in court proceeding
    2. If you filed in court (DJ), you cannot file PGR – but simply filing invalidity counterclaim does not preclude you filing PGR
    3. But if civil action within 3 months of patent grant/issue, then court will consider owner’s motion for preliminary injunction
    4. Estoppel effect – woulda coulda shoulda; petitioner cannot file a civil action or before the ITC or request PTO proceeding on any ground that petitioner “raised or reasonably could have raised” during the PGR
16. Can settle – before PTAB makes decision on merits
    1. settlement in writing and filed with the USPTO (generally treated as “business confidential info”)
    2. no more estoppel – petitioner can bring another proceeding
17. Intervening rights for amended claims
18. Final decision is appealable (by both parties) to courts – but cannot appeal intermediate decisions
19. Most foreign countries allow Opposition proceeding – competitors can submit stuff to challenge a published application

Post-Grant Review vs. IPR

1. Different eligible patents
2. PGR is first 9 months after issue/reissue, while IPR is for after 9 months
3. PGR threshold is more likely than not is lower than IPR threshold