The New Way to Challenge A Patent When Threatened: America Invents Act Creates the Post Grant Review

The America Invents Act (AIA) creates new administrative trial procedures to challenge patentability outside litigation before a district court venue. These trial procedures are namely (1) Post Grant Review (PGR), (2) Inter Partes Review (IPR) and (3) a transitional program for covered business method patents. These laws went into effect on September 16, 2012. This article covers the basics of the Post Grant review.

	Post Grant Review (PGR)	Inter Partes Review (IPR)
Standard for Initiation	“More likely than not” that petitioner would prevail, on at least one claim being challenged, or an significant novel or unsettled legal question.	“Reasonable likelihood” that petitioner would prevail” on at least one claim being challenged.
Grounds for Review	Any related to patent invalidity under 35 U.S.C. § 282 (except best mode).	Related to patent invalidity under 35 U.S.C. §§ 102 and 103 on the basis of patents or printed publications.
Time Frame for Filing by Petitioner	Within 9 months of grant.	Later of 9 months after grant or the date of the termination of the PGR.
Deadline for Completion	One year from filing, extendable by 6 months with establishment of good cause.	One year from filing, extendable by 6 months with establishment of good cause.
Prior Art	Any prior art related to patent invalidity under 35 U.S.C. § 282.	Prior art comprising solely patents or printed publications rendering invalidity under 35 U.S.C. § 102 (novelty) or § 103 (obviousness).
Caveats	May not be instituted if petition is filed after the petitioner filed a declaratory judgment action challenging the validity of a claim of the patent. However, counterclaims of invalidity brought in an action filed by patent owner is permissible.	May not be instituted if petition is filed after the petitioner filed a declaratory judgment action challenging the validity of a claim of the patent. However, counterclaims of invalidity brought in an action filed by patent owner is permissible.
Must Real Parties in Interest be Identified?	Yes	Yes
Estoppel	Estoppel effective upon a written PTAB decision upon any grounds that were raised or reasonably could have been raised.	Estoppel effective upon a written PTAB decision upon any grounds that were raised or reasonably could have been raised.
Authority	Patent Trial and Appeal Board (PTAB)	Patent Trial and Appeal Board (PTAB)
Scope of Discovery	Directly related to factual assertions advanced by either party in the proceedings.	Deposition of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.
Appellate Authority	Directly to Court of Appeals for the Federal Circuit (either party).	Directly to Court of Appeals for the Federal Circuit (either party).

  The PGR is an entirely new inter partes procedure permitting third parties to challenge the validity of an issued or reissued U.S. patent. Unlike a reexamination, which is limited in scope to prior art patents and printed publications under 35 U.S.C. §§ 102, 103, the PGR may be based on any patentability ground available under 35 U.S.C. § 282 (b)(2)-(3), including novelty and obviousness based on public use and sales, and failure to comply with the specification requirements of 35 U.S.C. § 112, other than best mode. A PGR petition may be filed by any party who is not an owner of the patent and has not filed a civil action challenging the validity of the patent. The review is limited in duration to the nine-month period following the grant of a patent or issuance of a reissue patent. Specifically, the PGR petition must be made on or before this nine-month date. The review authority has changed as well. Prior to AIA, post-grant review proceedings – namely inter partes and ex parte reexaminations, were reviewed by the examining corps of Central Reexamination Unit of the USPTO, essentially a specialized patent examining unit. Parties dissatisfied with the Unit’s decision would seek relief by appeal to the Board of Patent Appeals and Interferences. With the new post-grant review proceedings, PGR (and IPR) is decided by the newly formed Patent Trial and Appeal Board (PTAB), eliminating review proceedings by the USPTO examining corps. Appeals from Board decisions go directly to the U.S. Court of Appeals for the Federal Circuit, the highest authority for U.S. patent cases aside from the Supreme Court, itself. The standard for instituting a Post Grant Review is that the petitioner must either (1) demonstrate that it is more likely than not that at least one of the challenged claims is not patentable or (2) show that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The Board may take into account whether the same or substantially same prior art were previously presented to the Office. A PGR may not be instituted if the petition is filed after the petitioner filed a declaratory judgment action challenging the validity of a claim of the patent. In fact, filing the PGR petition under these circumstances automatically stays the declaratory judgment action, and the stay may be lifted only under certain circumstances, namely if the patent owner moves to lift the stay, the patent owner files an infringement suit or counterclaim for infringement, or if the petitioner moves to dismiss the civil action. Notably, counterclaims of invalidity typically brought by defendants, where the infringement claims are brought by the patent owner (i.e., a typical patent infringement suit) have no bearing on the defendant’s ability to file a PGR.