USPTO Trial Practice

Patent Post Grant Proceedings

The USPTO has a number of procedures in place to allow third parties to challenge the validity of patents. These proceedings are generally designed to be used as alternatives to, or in connection with, civil litigation. The Patent Trial and Appeal Board (PTAB) proceedings have limited discovery and statutory time frames which result in the proceedings generally being less costly than civil litigation.

 

Further, the person challenging the patent rights has the burden of proving unpatentability by the preponderance of the evidence in PTAB trial proceedings. This is a lower standard than civil litigation which requires proving invalidity by the clear and convincing evidence standard. As such, there is a lower hurdle to clear, making PTAB post grant proceedings desirable to petitioners.

 

However, it should be noted that a PTAB trial may limit a petitioner’s ability to challenge the patent claims, either in subsequent PTAB proceedings or civil litigation, based on grounds that the petitioner raised or reasonably could have raised in the PTAB proceeding.

 

Post grant review

A post grant review (PGR) is a PTAB trial proceeding to review the patentability of one or more claims in a patent on any ground of invalidity. PGR may be requested for generally the same grounds of invalidity that may be raised in civil litigation: novelty, obviousness, written description, enablement or indefiniteness. A PGR will generally be determined within one year after a proceeding is instituted.

 

A petition for PGR can be requested within 9 months after the grant of a patent or the issuance of a reissue patent. With a few exceptions, only those patents issuing from applications filed after March 16, 2013 are eligible for post grant review.

 

Inter partes review

Inter partes review (IPR) is a PTAB trial proceeding to review the patentability of one or more claims in a patent. IPR may be requested by a third party (not the owner of a patent) asserting that one or more claims of the patent are either obvious or anticipated based on one or more patents or printed publications. An IPR will generally be determined within one year after a proceeding is instituted. However, the grounds for challenging the claims of the patent are limited to only novelty and obviousness based on a patent or printed publication, so inter partes review is not always an acceptable alternative to civil litigation.

 

For a patent having an effective filing date prior to March 16, 2013, a petition for IPR can be filed at any time after the patent issues. For patents having an effective filing date after March 16, 2013, a petition for IPR may be filed after the later of (1) the date that is 9 months after the grant of a patent or issuance of a reissue or a patent or (2) if a post grant review is instituted, the date of the termination of the post grant review.

 

Covered business method patent review

The transitional program for covered business method patents (TPCBM) is a PTAB trial proceeding to review the patentability of one or more claims in a covered business method patent. Covered business method patents are defined as patents that claim a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

 

TPCBM proceedings generally employ the standards and procedures of a post grant review.  For example, a person can file a petition for a TPCBM proceeding on a patent only if the person has been sued for infringement of the patent or charged with infringement under the patent. 

 

This program is a transitional program, and all challenges under the TPCBM must be filed before September 16, 2020. 

Our USPTO Trial Practice Attorneys

Joseph A. KromholzFounding Partner
Patrick J. FleisPartner
Mollie Ambrose NewcombAttorney