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Intellectual Property: Post-Grant Review

Post-Grant Review (PGR) is a new post-issuance procedure created under the American Invents Act (AIA) that provides patent challengers a mechanism for challenging the validity of an issued patent before the U.S. Patent and Trademark Office (USPTO). To invoke PGR, the patent challenger must file a petition with the Patent Trial and Appeal Board (Board) within 9 months of issuance of a patent or reissuance of a broadening reissue. The petition must identify the challenged claims, the grounds for challenging each claim, and evidence supporting such challenge. The grounds for challenging the validity of a patent under PGR is much broader than other post-issuance proceedings, encompassing invalidity for failure to comply with 35 USC 101 (patentable subject matter), 35 USC 102 (novelty), 35 USC 103 (non-obviousness), and 35 USC S 112 (written description and enablement).

The patent owner may file a preliminary response to the petition, setting forth reasons why the petition should not be granted or statutorily disclaiming one or more of the challenged claims. The Board will authorize the review to proceed when the petition, if unrebutted, demonstrates that it is more likely than not that at least one of the challenged claims is unpatentable, or that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The Board can institute the review on a claim-by-claim basis, and its decision on whether to institute a proceeding is final and non-appealable.

Upon institution of a PGR proceeding, the patent owner may file a response to the petition, rebutting the ground(s) for unpatentability that were authorized for review, and a motion to amend the patent. Any amendments must be responsive to the ground(s) of unpatentability and must not enlarge the scope of the claims or introduce new subject matter. The motion may also cancel the challenged claim and propose a reasonable number of substitute claims for consideration by the Board.

PGR will not be authorized if, before the petition is filed, the patent challenger or real party of interest filed a civil action challenging the validity of a claim of the patent (a counterclaim challenging the validity of a patent claim does not constitute a civil action). Similarly, if the patent challenger or real party of interest files a civil action challenging the validity of a claim of the patent on or after the date the same party files a petition for PGR, the civil action will be automatically stayed.

Like other new post issuance trial procedures established by the AIA, a PGR proceeding before the Board is to be completed within 12 months from the date the Board authorizes the review.

While PGR provides patent challengers a new and seemingly attractive mechanism for challenging the validity of patent, the estoppel provisions of PGR need to be considered. The patent challenger or real party of interest in a PGR that results in a final decision is estopped, upon the written determination of Board, from asserting that a claim of the challenged patent is invalid on any ground that was raised or reasonably could have been raised during the PGR in any other proceeding before the USPTO, in a civil action, and in an ITC proceeding. Since the grounds available for PGR encompass all grounds of invalidity defense during litigation, the estoppel provisions may severely limit a patent challenger’s validity defense in future litigation.

PGR became available on September 16, 2012 and was immediately available for business method patents. Additionally, the Board, in the “interest-of-justice,” may order that an interference commenced before September 16, 2012 be dismissed to the filing of petition for PGR. For all other patents, PGR is only available for issued patents having a priority date on or after March 16, 2013.

LeClairRyan’s patent attorneys, having extensive experience and skill in handling procedures analogous to PGR in Europe and Australia (i.e., oppositions) as well as interference and other post-issuance procedures before the USPTO. As such, we are well positioned to file or defend against a PGR proceeding and achieve favorable results for our clients.