Post Grant Review: Everything You Need to Know
A post grant review is a way of questioning a patent's validity recently issued by the U.S. Patent and Trademark office. 8 min read
What Is a Post Grant Review?
A post grant review is a way of questioning a patent's validity recently issued by the U.S. Patent and Trademark office. The America Invents Act (AIA) created it as a counterpart to inter partes review. Together, they replace the inter partes re-examination. A post grant review is available immediately after the patent has been issued. An inter partes review becomes available after the post grant review period has passed.
Post Grant Proceedings
The post grant review process was designed to allow the proceeds to be quick. The Director needs to set the rules that explain how long the proceedings will last within one year from the start of the proceedings. If the Director can show sufficient cause, he or she can set the rules within 18 months.
The Patent Trial and Appeal Board (PTAB) initially handles post grant review proceedings. They bypass the patent office examiners at the Central Reexamination Unit (CRU). This means that a final decision of the PTAB is immediately appealable to the U.S. Court of Appeals for the Federal Circuit, either by the patent owner or a third party.
To begin proceedings on a post grant review, you must file a challenge within nine months of a patent's issuance or reissuance. You need to show that at least one challenged claim is unpatentable or that the there is a new or unsettled legal question that affects other patents or patent applications.
Post-Grant Review Versus Inter Partes Review
While the two are meant to work side-by-side to ensure patents aren't issued unjustly, there are some key differences between post grant review (PGR) and inter partes review (IPR).
- Availability: PGR procedure are available within nine months of the issuance of a patent. IPR only becomes available nine months after the patent has been granted or after a PGR proceeding has expired. PGR is available for some business method patents, patents that are under the first-inventor-to-file system, and pending interferences. By contrast, all patents are eligible for IPR.
- Threshold Showing: The basis for starting a PGR proceeding requires you show it is "more likely than not" that one or more claims will be found invalid. To instigate an IPR proceeding, you need to show there is a "reasonable likelihood" you will prevail with respect to at least one of your claims.
- Anonymity: There is no anonymity with either a PGR or IPR. Petitioners need to identify all real parties that are in involved in some way with the petition.
- Estoppel: Estoppel applies to both PGR and IPR proceedings. It also has legal effect on any further proceedings before the USPTO, Federal courts, or the International Trade Commission.
- Time to Completion: The AIA requires a final determination on any PGR or IPR proceedings to be issued within one year. If the Patent and Trademark Office can show good cause, then it can be extended up to 18 months.
- Appeal: In both PGR and IPR proceedings, either party can appeal directly to the Federal Circuit.
- Bases of Invalidity: In PGR proceedings, the petitioner can argue any ground of invalidity, including novelty, obviousness, statutory subject matter, written description, enablement, and definiteness. In IPR proceedings, the Patent and Trademark Office only considers novelty or obviousness arguments.
- Before Whom: PGR and IPR proceedings are both held before the Patent Trial and Appeal Board.
Estoppel in PGR and IPR
- The forums in which estoppel applies are broader in PGR than they are in IPR. An estoppel created by a post grant review applies to all U.S. Patent and Trademark Office proceedings, ITC proceedings, and district court proceedings. Estoppel created by inter partes reexaminations only applies to district court proceedings.
- Estoppel attaches much earlier for post grant reviews than for inter partes re-examination. In IPR, all appeals need to be exhausted before the estoppel attaches. Conversely, the estoppel from a PGR as soon as the final written determination is made by the PTAB.
- In IPR, the third party is estopped from relying on anything that was raised or could have been raised during the proceedings. Estoppel under PGR is completely the opposite. You can only rely on grounds that were raised or those that reasonably could have been raised.
- The available grounds under PGR are more numerous than those under IPR. Therefore, the estoppel provisions may preclude the third party from raising nearly all the invalidity defenses in litigation.
The Transitional Program for Covered Business Method Patents (CBM) allows a person who has been sued or threatened to be sued over a financial business method patent to use a procedure similar to PGR. Although CBM follows the procedures for PGR, there are a few differences.
- A CBM can be used for any eligible patent as of September 16, 2012. If CBM is being used against a patent that has an effective filing date before March 16, 2013, the prior art that may be used to invalidate the patent is limited.
- A CBM cannot be used during the period that a PGR could be used against the patent.
- The Petitioner must have been sued or have brought a declaratory judgment action against the patent.
- The claims challenged in a CBM need to focus on a problem in the method or corresponding apparatus for either performing data processing or other operations used in the practice, administration, or management of a financial product or service.
- A CBM can't challenge a claim for a technological invention. It's up to the petitioned to prove a claim is not directed to a technological invention.
- The estoppel for a CBM ensures the petitioner only raises issues that were actually raised in the initial proceedings.
Ex Parte Re-examination
Ex parte re-examination (EPR) proceedings differ from PGR. This is because they only involve the patent owner and the U.S. Patent and Trademark Office. After a request is filed, the third-party requester can no longer be involved unless the patent owner files a statement seeking to rebut their statements.
- Ex parte re-examination is conducted in front of a panel of three examiners from a specialized unit of the Patent and Trademark Office known as the central reexamination unit (CRU).
- Prosecution of EPR closes submission of a first response from the patentee. This is typically after the submission of evidence and amendments.
- Requests for continued examination aren't possible in EPR proceedings.
- The patent owner can appeal the final decision of the CRU to the PTAB. From there, they can appeal to the U.S. Court of Appeals for the Federal Circuit.
- No legal estoppel is created by an EPR proceeding.
Trends in PGR Proceedings
- More than half of all PGR petitions challenge patents that relate to biotechnology, pharmaceuticals and chemicals, and materials engineering. The rest of the petitions involve a wide variety of technologies from livestock breeding to services at correctional facilities.
- To date, PGR petitions have only accounted for a small percentage of post-grant proceedings. When compared to IPRs and CBM reviews, PGRs only account for about one-half of 1 percent of the total post grant proceedings.
- Most PGR petitioners are small- to medium-sized, private companies.
- Of the four main reasons to challenge a patent via a petition for PGR, the least common is a challenge based on the patentable subject matter at 30 percent. The most common are obviousness at 85 percent. Fifty-eight percent of petitions were for anticipation and 50 percent were for challenges.
- PGR petitions are usually filed in conjunction with patent litigations.
Considerations for PGR Filings
With post grant procedures changing constantly, companies need to reassess their litigation strategies and determine what the best option is for their argument.
- Decision Maker: Now that both the PGR and IPR proceedings will be held in front of the PTAB, the decision on validity will be made by a panel of three administrative patent judges with experience in patent law. In a district court, the validity is decided by a jury of people with very little knowledge of patent law. It will be important to consider your litigation strategies based on who will make the decision.
- Cost and Speed: The cost of PGR proceedings is higher than a European proceeding. But it is still much less than district court litigation. The U.S. Patent and Trademark Office's rules set the filing fee based on the number of claims. If you are making 20 or fewer claims, then it will cost roughly $35,000. The fee increases for every additional set of 10 claims. PGR and IPR proceedings are also going to be much faster than most district court proceedings, since it has been capped at 18 months.
- Claim Interpretation: The PTO gives claims the broadest reasonable interpretation. The courts, by contrast, will construe the claims much more narrowly which may avoid looking to prior art.
- Burden of Proof: In PGR and IPR proceedings, a petitioner needs to prove invalidity with evidence and a burden of proof that is much lower than in a district court. The lower standard for proving invalidity in PGR and IPR proceedings makes them more desirable forums in some situations.
- Threshold Showing: The threshold for instigating a PGR proceeding is the "more likely than not" standard. This is a lower threshold which provides an incentive for challenging the patent early, but it requires you to be quick and decisive. However, it may not be possible to develop your arguments fully before the nine-month period. Challenging the patent in district court could, therefore, be a more beneficial option that gives you more time and avoids the estoppel effects of a PGR proceeding.
- Limitations on Available Evidence: In PGR proceedings, the petitioner can assert prior art and argue other grounds of invalidity such as lack of utility, enablement, written description, and definiteness. In IPR proceedings, the PTAB will only look at patents and printed publications.
Timeline for Post Grant Review
The timeline for PGR moves quickly. There are several simple steps to follow as you move through the proceedings.
1. Petition for post grant review has to be filed no later than nine months after the issue or reissue date. It has to specify grounds for invalidity and needs to be served on a patent owner and filed with a fee according to a filing date.
2. Then there is an optional preliminary response time available for the petition. The response needs to be issued no more than three months after the petition is filed. Not responding can expedite the proceeding.
3. The post grant review will proceed no more than five months after the petition.
4. The patent owner can then issue his or her response. It is optional and should address any grounds that have not already been denied. The response is due either three months after the institution of review or by a time that has been specified by the Board.
5. There will then be a motion to amend patent. Only one motion is available by right.
6. There is a period of discovery. It is limited to factual assertions by both the parties.
7. The petitioner can then file supplemental information that may assist with their argument.
8. The final decision is made no more than one year after institution of review. It is extendable by no more than six months from this period.
Frequently Asked Questions
- Who Can Petition for a Post Grant Review?
Any person who is not the owner of a patent can file with PTAB for a petition to institute a PGR. The only reasons he or she cannot do this are:
- If it is before the date on which the petition for review is filed
- The petitioner has already filed a civil action challenging the validity of a claim of the patent
- The petitioner or a party relating to the petitioner is estopped from challenging the claims.
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