Post-Grant Review

By Eugene T. Perez

In accordance with 35 U.S.C. §§ 321-329 added by the AIA,1 a third party will be able to request a post-grant review (“PGR”) of an issued patent.

In summary, PGR can be requested based on any ground of rejection, except for violation of the best mode requirement.  The third party requester must identify all real parties in interest.  A PGR cannot be instituted if there is a prior civil suit challenging validity of the same patent.  But if a PGR is instituted, a later or same day filed civil suit would be automatically stayed (with exceptions as identified in § 325).  The standard for granting (just to start) the PGR is “more likely than not at least 1 of the claims challenged in the petition is unpatentable.” Finally, estoppel applies with issuance of the United States Patent & Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) decision, wherein the third party requester or its privies cannot participate in any USPTO proceeding or file any court action against the patent which asserts that a claim in the patent is invalid “on any ground that the petitioner raised or reasonably could have raised” during the initial PGR.3 The USPTO Director may limit the number of PGR proceedings during each of the first four one-year periods that PGR is available.

I.       Time Frame

A third party will be able to request a PGR of an issued patent during the 9-month window (including exactly 9 months) following issuance of a patent or reissue patent.

It is worth noting that although the USPTO had to implement rules and procedures by September 16, 2012,4 no patents qualify for post-grant review.  The patents that qualify for PGR are those having benefit of priority (effective filing date) of March 16, 2013 or later.5 

II.      The Petitioner

A petitioner in a PGR may request to cancel as unpatentable one or more claims of a patent on any grounds that could be raised under 35 U.S.C. §§ 282(b)(2), 282(b)(3), 101, 102,  103 or 112, except for compliance with the best mode requirement.  A petition filed under 35 U.S.C. § 321, as amended, may be considered by the Office only if certain conditions are met:

  1. Payment of the $12,000 request fee, and $250 for claim in excess of 20 claims being requested (an additional $14,000 fee is required for instituting IPR, and $550 for each claim in excess of 15 claims being reviewed);6
  2. the petition must identify all real parties in interest;
  3. the petition must identify, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including
    1. Copies of patents and printed publications that the petitioner relies upon in support of the petition;
    2. affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions
  4. the petition must provide such other information required by regulation; and
  5. the petitioner must provide copies of any of the documents required under paragraphs (2), (3), and (4) of 35 U.S.C. § 322(a) to the patent owner or, if applicable, the designated representative of the patent owner.

III.    Starting the PGR Proceeding

If a PGR petition is timely filed, the patent owner has the right to file a preliminary response (within 3 months of the petition) to the petition that sets forth reasons why no PGR should be instituted based upon the failure of the petition to meet any of the requirements listed above.

 The PTAB will determine whether to institute a PGR within three months after: (1) Receiving a preliminary response to the petition; or (2) if no such preliminary response is filed, the last date on which such response may be filed. The USPTO will notify the petitioner and patent owner, in writing, of the Office’s determination of whether to institute PGR, and will make the notice available to the public as soon as is practicable.  The notice will include the date on which the review will commence. The Office may not authorize a PGR to be instituted unless (1) the information presented in the petition and any response filed by the patent owner shows that it is more likely than not at least one 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. 

It is currently understood that the “more likely than not” standard is slightly higher than the “reasonable likelihood” standard for granting an IPR proceeding due to some of the issues that can be raised in PGR, such as enablement and § 101 invention issues, that may require development through discovery.7

IV.    During the PGR Proceeding

The petitioner has the burden of proving a proposition of unpatentability by a preponderance of the evidence. Also, during a PGR, the patent owner may file one motion to amend the patent in one or more of the following ways: (A) cancel any challenged patent claim; and/or (B) for each challenged claim, propose a reasonable number of substitute claims.8 Also, 35 U.S.C. § 326(d)(2) provides that additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to advance materially the settlement of a proceeding.  The patent owner is not allowed to enlarge the scope of the claims of the patent or introduce new matter.

V.      Stays and Merger

35 U.S.C. § 325(a)(1) provides that an IPR may not be instituted if, before the date on which the petition for review is filed, the petitioner or real party-in-interest had filed a civil action challenging the validity of a claim of the patent.  There is automatic stay of a civil action brought by the petitioner or real party-in-interest challenging the validity of a claim of the patent and filed on or after the date on which the petition for IPR was filed, until certain specified conditions are met. Also, a counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent.

Also, 35 U.S.C. § 325(d) provides that, during the pendency of an IPR, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.

VI.      Estoppel

A final written decision by the USPTO PTAB, resulting from a PGR proceeding, estops (precludes) the petitioner, or the RPI of the petitioner or any privy of the petitioner, from asserting in a district court proceeding, an International Trade Commission (“ITC”) proceeding, or any other USPTO proceeding (e.g., an ex parte reexamination) that a claim is invalid or unpatentable on any ground the petitioner “raised or reasonably could have raised” during the PGR proceeding.9  The transitional program of PGR for covered business method patents estoppel applies to those issues only actually raised.

As a basic example of estoppel, if Company X raises the issue that Company Z’s patent is unpatentable due to non-compliance with the enablement requirement in a PGR, and Company X loses the PGR, Company X cannot later raise another issue, such as a rejection for lack of utility, in any proceeding if that issue could have been raised in the PGR.   Therefore, if you do get involved in a PGR or PGR for a covered business method, you do not get “two bites at the apple” in any forum.

VII.        Settlement              

The PGR can be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the USPTO has decided the merits of the proceeding before the request for termination is filed.10  35 U.S.C. § 327 also provides that if the PGR is terminated with respect to a petitioner, no estoppel will attach to the petitioner, or to the real party-in-interest or privy of the petitioner, on the basis of that petitioner's institution of that PGR. Any such agreement will be treated as business confidential information, will be kept separate from the file of the involved patents, and will be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.

 


  1. The AIA has 37 sections which changes certain sections of 35 U.S.C., which can be confusing.  For instance, the AIA has Sec. 3 that amends 35 U.S.C. Sec. 135 to include the new derivation proceedings.
  2. 35 U.S.C. § 324.
  3. 35 U.S.C. § 325.
  4. See § 301(e)(3).
  5. See § 3(n)(1) of the AIA, or p. 48687 of 77 Fed. Reg. (Aug. 14, 2012).  The priority of the patent has to be March 16, 2013 or later, and thus the patent is more than likely to qualify for PGR much later than March 16, 2013.
  6. 37 C.F.R. § 42.15 (through May 9, 2013).
  7. See legislative history, including, e.g., 157 Cong. Rec. S1375 (March 8, 2011, Sen Kyl).
  8. 35 U.S.C. § 326(d)(1).
  9. 35 U.S.C. § 325(e).
  10. 35 U.S.C. § 327(a).