HOW WOULD “POST-GRANT REVIEW” WORK?

Scott Daniels | April 25, 2011

Q:        Who may petition the PTO for post-grant review?

A:        Anyone who is not the patentee may request post-grant review.

Q:        What grounds may be asserted in a petition for post-grant review?

A:        A request may be based on any defense under 35 U.S.C. § 282, ¶¶ 2 & 3, i.e., all defenses under §§ 102, 103 & 112.

Q:        What is the deadline for petitioning for post-grant review?

A:        A request must be filed no later than nine months after the patent issue date or issue date of a reissue patent.

Q:        What must a petition contain?

A:        A petition must disclose the “real party in interest” petitioning for review and describe in detail the grounds for review; the petition must also comply with certain formal requirements and include a filing fee to be promulgated by the PTO.

Q:        Can the patentee reply to a petition?

A:        Yes.  The patentee has two months from the petition filing date to file a “preliminary response”explaining why post-grant review should not be ordered.

Q:        What standard does the PTO Director apply to determine whether to order post-grant review?

A.     The PTO Director orders post-grant review if either (1) “the information in the petition, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable,” or (2) “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”

Q:        Does a final PTO decision in a post-grant review estop the petitioner?

A:        Yes, in two ways.  First, a petitioner may not raise any ground for review of a claim that it “raised or reasonably could have raised” regarding that claim in an earlier post-grant review.  Second, a petitioner may not assert in an infringement action in District Court or an investigation at the US ITC any ground against a claim that it raised during a post-grant review.

Q:        Which office within the PTO conducts post-grant reviews?

A:        The Patent Trial and Appeal Board.

Q:        How are post-grant reviews to be conducted?

A:        The PTO is authorized to create regulations for conduct of post-grant review, including oral hearings and “standards and procedures for discovery of relevant evidence.”

Q:        What is the scope of discovery?

A:        “[D]iscovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding.”  The PTO may also create regulations for providing for (1) sanctions against the parties for abuse of discovery or process, and (2) protective orders governing the exchange of confidential information between the parties.

Q:        May the patentee amend its claims?

A:        Yes.  The patentee may file 1 motion “to amend the patent…to cancel a challenged claim or propose a reasonable number of substitute claims.”  Additional motions to amend may be permitted with consent of the petitioner or “for good cause shown.” 

Q:        What is the standard of proof?

A:        “[T]he petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 

Q:        Can a post-grant review be settled?

A:        Yes.  The patentee and the petitioner may jointly request termination of the proceeding, unless the PTO has made a final decision on the merits.  Any agreement between the parties to terminate a post-grant review must be in writing and submitted to the PTO.  At the request of the parties, the agreement will be kept under seal and be accessible to Federal agencies upon request and to private parties upon “a showing of good cause.” 

Q:        How does the Patent Trial and Appeal Board issue its final decision?

A:        The Board issues a final written decision, and the Director issues a certificate indicating any cancelation, confirmation, amendment or addition of claims.

Q:        May a party appeal the Patent Trial and Appeal Board’s final decision?

A:        Yes.  “A party dissatisfied with the final written decision of the Patent Trial and Appeal Board … may appeal the decision” to the CAFC. 

Q:        When do post-grant reviews take effect?

A:        One year from the date of enactment of the legislation.  Post-grant review is applicable to any patent “that contains or contained at any time…a claim or a claimed invention that has an effective filing date…18 months or more after the date of enactment of this Act [or] a specific reference under section 120, 121, or 365 (c)…to any patent…that contains or contained at any time such a claim.” 

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