Post Grant Review

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With the implementation of the America Invents Act, the USPTO has revamped a number of its existing Post-Grant Patent Proceedings and instituted several entirely new proceedings. These proceedings can be divided into proceedings where a petitioner is challenging the validity of an issued patent, including Post-Grant Review (“PGR”), Inter Partes Review (“IPR”), Covered Business Method Review (“CBMR”), ex parte reexamination, and derivation proceedings; and those proceedings where the petitioner is requesting that the validity of an issued patent be reaffirmed, including reissue and supplemental examination.

Post Grant Review:
One hotly-debated aspect of the AIA was its introduction of a European-style opposition proceeding termed Post-Grant Review. While the proceeding that has ultimately been implemented includes several significant differences from its European counterpart, e.g., the inclusion of controversial estoppel provisions, PGR is widely anticipated to function as a similar check on examination quality.

A petitioner for PGR may request to cancel one or more claims of a patent as unpatentable on any invalidity ground that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b), with the exception of best mode. Thus, petitions may be filed alleging anticipation or obviousness over any prior art, including prior acts such as sales or offers for sale, and petitions may also include allegations that the claims are directed to non-statutory subject matter or fail to meet the written description or enablement requirements. PGR is only available for first-to-file patents (those issuing from applications having an effective filing date on or after March 16, 2013).

PGR may be requested up to nine months after the grant of an eligible patent or issuance of an eligible reissue patent. A successful petition for PGR must establish that it is more likely than not that at least one of the challenged claims is unpatentable. Alternatively, the petition may raise a novel or unsettled legal question that is important to other patents or patent applications. The Patent Trial and Appeal Board will decide petitions for post-grant review and conduct any ensuing reviews. The Board may take into account whether the same or substantially same prior art or arguments previously were presented to the Office, and subsequently reject the petition or request on such grounds.