What is Post- Grant Review
The Post-Grant Review (PGR) was introduced as a counterpart to inter-partes review by the America Invents Act (AIA). They collectively replace inter partes re-examination to provide a more efficient and streamlined process for challenging the validity of a patent. PGR is available immediately after patent issuance, while inter partes review becomes available only after the period for post-grant review has passed. According to USPTO Post grant review is a 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.
Notably, as of September 16, 2012, the PGR became available for covered business method patents irrespective of their priority date. However, for technologies other than covered business methods, PGR is only available for patents with a priority date later than March 15, 2013.
Purpose of PGR
The purpose of PGR is to provide a forum for challenging the validity of a patent before the Patent Trial and Appeal Board (PTAB). The PTAB is an administrative tribunal that is responsible for conducting post-grant proceedings, including PGR.
PGR allows any person who is not the patent owner to challenge the validity of a patent. Unlike other post-grant proceedings, such as inter partes review or ex parte re-examination, PGR allows for a broader scope of review. The petitioner can challenge the validity of the patent on any ground such as novelty, obviousness, and written description.
Process of PGR
To initiate PGR, the petitioner must file a petition with the PTAB within nine months of the issuance of the patent. The petition must identify all real parties in interest and must include a statement of the grounds for challenging the validity of the patent.
The PTAB will then determine whether to institute the review based on the information provided in the petition. If the review is instituted, the patent owner has the opportunity to file a preliminary response to the petition. The petitioner can then file a reply to the preliminary response.
The PTAB will then conduct a trial on the merits of the petition, which may include oral argument and the submission of evidence. The PTAB will then issue a final written decision on the validity of the patent.
Advantages and Disadvantages of PGR
There are several advantages to PGR proceedings. First, one advantage of PGR is that it provides a more streamlined and efficient process for challenging the validity of a patent compared to litigation. PGR can be a more cost-effective way for interested parties to challenge the validity of a patent, as litigation can be a lengthy and expensive process.
Second, PGR allows for a broader scope of review than other post-grant proceedings. This broader scope of review can make it easier for interested parties to challenge the validity of a patent on various grounds, compared to the more limited scope of inter partes review.
Third, PGR is conducted before the PTAB, a specialized tribunal with experience in conducting post-grant proceedings. This can provide a more efficient and effective forum for resolving patent disputes.
However, there are also disadvantages to PGR. First, it has a more rigid time frame for initiation. The petitioner must file the petition within nine months of the issuance of the patent. This can make it more difficult for interested parties to challenge the validity of a patent if they miss the window for filing.
Second, PGR is a relatively new process, and there is still some uncertainty surrounding its implementation. This uncertainty can make it difficult for parties to predict the outcome of a PGR and can make it more difficult to determine the best course of action.
While PGR has its advantages and disadvantages, it remains an essential mechanism for maintaining the integrity of the patent system. It provides a cost-effective and efficient way for interested parties to challenge the validity of a patent. It allows for a broader scope of review than other post-grant proceedings.
PGR is an essential mechanism for maintaining the integrity of the patent system. It allows interested parties to challenge the validity of a patent in a streamlined and cost-effective way while also allowing for a broader scope of review. As PGR continues to develop, it is likely to become an increasingly popular tool for resolving patent disputes.
IIPRD provides Post-grant review (PGR) support to third parties to challenge qualified patent claims based on patents, printed publications, and a variety of other patentability grounds. Patent Professionals including Patent Attorneys, Registered Patent Agents, Engineers, have developed an extensive knowledge base of drafting patent inter partes re-examination petitions, reissue petitions, conducting necessary searches, analysis, and interference best practices. While the mechanisms of post-grant challenges have changed, the arguments, justifications, and strategies are largely similar to the other modes of dispute resolutions or patent validity analysis, and therefore our past experience for other re-examination proceedings and litigation support helps clients take steps early in the process to prevent unwarranted dissemination of information that may hinder their subsequent efforts to defend or reassert their patents.