Lectures & Articles

Post-Grant Review

In accordance with §§ 321-329 of the Leahy-Smith America Invents Act (AIA),¹ a third party will be able to request a post-grant review (PGR) of an issued patent during the 9-month window following issuance (of a patent or broadening, reissue patent). Any ground of rejection, except for violation of best mode, can be used as a basis for requesting PGR.  The third party requester must identify all real parties in interest.  A PGR cannot be instituted if there is a prior civil suit challenging validity of the same patent.  But if a PGR is instituted, a later or same day filed civil suit would be automatically stayed (with exceptions as identified in § 325).  The standard for granting (just to start) the PGR is “more likely than not at least 1 of the claims challenged in the petition is unpatentable” (§ 324).  Finally, estoppel applies with issuance of the Patent Trial and Appeal Board (PTAB) decision, wherein the third party requester or its privies cannot participate in any USPTO proceeding or file any court action against the patent which asserts that a claim in the patent is invalid “on any ground that the petitioner raised or reasonably could have raised” during the initial PGR.

As stated by the USPTO:

Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under §282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting post grant review will take effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

            It is worth noting that although the USPTO has to implement rules and procedures by September 16, 2012,² no patents will even qualify for post-grant review until March 16, 2013 or later.³ Thus, there is likely a slow ramp up in use of PGR.

1. Now Public Law 112-29 (Sept. 16, 2011).

2. See § 301(e)(3).

2. See § 3(n)(1) of HR 1249.