Editor: Erika Harmon Arner
Post Grant Review (PGR), is a trial proceeding before the Patent Trial and Appeal Board (PTAB), providing for the review of patentability of one or more claims of a patent following the issuance of patent or a reissue patent. PGR became available on September 16, 2012, but only for a subset of patents called “covered business method” patents (See To Do List: Filing a CBM TPGR). PGR will become more widely available as patents with effective filing dates on or after May 16, 2013, begin issuing.
Some things to consider before filing a petition for PGR:
Understand the Timing
For a patent with an effective filing date on or after March 16, 2013, a petition for a PGR must be filed no later than nine months after the date of the grant of a patent or of the issuance of a reissue patent. If review is instituted, the PTAB will issue a decision within one year, with an optional six month extension for good cause.
Know Who Can File
Any party other than the patent owner may file a petition for PGR, with the exception that one who has brought a civil suit challenging the validity of the patent is barred from seeking review.
Choose Your Grounds of Challenge
Permissible grounds for seeking review are any that could be raised under paragraphs (2) or (3) of 35 U.S.C. § 282(b) relating to invalidity (i.e., §101, novelty, obviousness, written description, enablement, indefiniteness, but not best mode).
Consider Estoppel Effects
A petitioner (or any real parties in interest or privies) is barred from requesting or maintaining a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the PGR. Further, a petitioner (or any real parties in interest or privies) may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that was raised or reasonably could have been raised in the PGR proceeding. See, e.g., 35 U.S.C. § 325(e)(2).
Required Parts of Petition
A petition for PGR must contain the following information:
- The grounds for standing;
- An identification of all claims challenged and all grounds on which the challenge to each claim is based;
- A claim construction for each challenged claim;
- A specific explanation of the grounds for unpatentability;
- A specific explanation of the relevance of evidence relied upon;
- An identification of all real parties in interest;
- Copies of evidence relied upon; and
- The required fee.
Know the Rules
In addition to 35 U.S.C. §§ 321-329, several different rules packages govern PGR proceedings. On August 14, 2012, the PTO promulgated Final Rules which implement procedures for PGR:
- Inter Partes, Post-Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012)
The PTO has also promulgated Final Rules governing administrative trials before the Board and has published a corresponding Trial Practice Guide:
- General Administrative Trial Final Rules (77 Fed. Reg. 48612, August 14, 2012)
- Trial Practice Guide (77 Fed. Reg. 48756, August 14, 2012)
Learn from Examples and Tips
The PTAB website includes a link to the Patent Review Processing System (PRPS), the electronic filing system for PGR proceedings. Here, nearly all of the documents filed in these proceedings are available to the public.
The PTO has supplied the following answers to Frequently Asked Questions regarding PGR:
Hon. Michael Tierney, Lead Judge of the PTAB, has also provided the following “Tips for Filing Petitions and Making Successful Arguments Before the Patent Trial and Appeal Board”:
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