Understanding Post-Grant Review


Last week, I published an article about inter partes review on IPWatchdog.com. Patent Office statistics for FY 2013 and FY 2014 show that there have been a total of 361 decisions on IPR petitions, with 288 trials instituted. There have been 11 cases that have been joined and only 62 petitions denied, which corresponds with an 82.8% IPR petition grant rate. Having said this, the IPR grant rate during FY 2013 was 87.2%, while so far during FY 2014, the IPR grate rate has been 77.2%.

But what about post-grant review?

Both inter partes review and post-grant review became a reality when “Phase 2” of the America Invents Act (AIA) became effective on September 16, 2012. But you haven’t seen any post-grant reviews yet, aside from the quasi-post-grant review known as covered business method (CBM) review. That is because the post-grant review provisions apply only to patents issued from applications that have an effective filing date on or after March 16, 2013.  Said another way, post-grant review proceedings are only available to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

Thus, not even all of the patent applications filed on or after March 16, 2013, will result in patents that could be challenged via post-grant review. For the time being, the only patents that realistically could be subject to post grant review are those filed on or after March 16, 2013, are subject to first-to-file provisions of the AIA, and which have been accelerated or prioritized. Currently, there are few patents that are susceptible to a post-grant review challenge, but that will change little by little as we distance ourselves from the March 16, 2013, full implementation of the AIA.

But what is post-grant review?

A petitioner in a post-grant review may seek the cancellation of one or more claims of an issued patent. The Patent Trial and Appeal Board will conduct the proceedings and the procedure is intended to offer yet another avenue to challenge patents post-issuance. However, the petition for a post-grant review must be filed not later than 9 months after the date of the grant of a patent or the issuance of a reissue patent. Therefore, time is of the essence if you want to take advantage of this challenge procedure, which you very well might, given that more prior art will be considered in a post-grant review than in an inter partes review.

The grounds for seeking post-grant review include grounds that could be raised under either 35 U.S.C. 102 or 103, including those based on prior art consisting of patents or printed publications. Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement. Contrast this with the grounds for seeking inter partes review, limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

There are limits to filing a post grant review even within the 9-month timeframe. A post-grant review may not be instituted if before the petition for review is filed the petitioner filed a civil action challenging the validity of a claim of the patent. If the petitioner files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for post-grant review of the patent, that civil action is automatically stayed until either the patent owner moves the court to lift the stay; the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or the petitioner or real party in interest moves the court to dismiss the civil action. In other words, post-grant review does not provide the opportunity for concurrent challenges.

A post-grant review can be initiated in two different circumstances. First, a petition will be granted and post-grant review initiated when the information presented in the petition demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. Alternatively, post-grant review can be initiated by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The patent owner does, however, have the right to file a preliminary response to the petition for post-grant review, setting forth the reasons why no post-grant review should be instituted.

Post-grant review also comes with some estoppel concerns and litigation issues. The petitioner (or privy) in a post-grant review may not request or maintain a proceeding before the Patent Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review. Moreover, the petitioner in a post-grant review of a claim may not assert either in a patent infringement litigation before a federal court or the International Trade Commission that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

For more information on post-grant review please see:



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