Post-grant review was introduced by the America Invents Act (AIA) as a counterpart to inter partes review. Together, they collectively replace inter partes reexamination, with post-grant review being available immediately after patent issuance, and inter partes review becoming available only after the period for post-grant review has passed.
As of September 16, 2012 post-grant review became available for covered business method patents irrespective of their priority date. For technologies other than covered business method, post-grant review is only available for patents with a priority date later than March 15, 2013.
The USPTO released the final rules and a trial practice guide for post-grant review proceedings on August 14, 2012:
Several aspects of post-grant review are designed to allow the proceedings to conclude quickly. Chief among them are AIA provisions that compel the Director to set forth rules yielding typical completion of post-grant review proceedings within one year of their commencement, or within one year and six months if the Director can show sufficient cause. Also, post-grant review proceedings are initially handled by the Patent Trial and Appeal Board (PTAB), without prior review by the patent office examiners at the Central Reexamination Unit (CRU). As a result of the review being conducted directly by the PTAB, there is no intermediate administrative appeal option. Rather, a final decision of the PTAB is immediately appealable to the U.S. Court of Appeals for the Federal Circuit (CAFC), either by the patent owner or the third party.
To invoke post-grant review, a challenge must be filed within nine months of a patent’s issuance (or reissuance), establishing that at least one challenged claim is more likely than not to be found unpatentable, or that the request raises a novel or unsettled legal question that is important to other patents or patent applications. During that time, a third party may request a post-grant review of one or more claims, so long as the request is filed before that third party initiates a declaratory judgment action alleging invalidity of a claim of the patent. Counterclaims and post-grant review are deemed independent, leaving the third party free to pursue concurrent invalidity counterclaims and district court litigation regardless of timing.
Timing and patent eligibility aside, there are several significant differences between post-grant review and conventional inter partes reexamination. Perhaps most notable are the available grounds of rejection. Unlike inter partes reexamination, post-grant review can be sought based on any grounds that can be used to challenge the validity of a patent claim (with the exception of failure to disclose the best mode). Thus, in addition to patents and printed publications, post-grant review can be sought by alleging unpatentability based on evidence of public use, on-sale activity, or other public disclosures. Moreover, post-grant review can be sought based on an alleged lack of compliance with written description, enablement, or patent eligibility requirements.
Also, post-grant review contemplates several litigation-like aspects, such as limited discovery, protective orders, and settlement.
The estoppel effects of post-grant review also differ from those of inter partes reexamination in several important ways. Specifically, while each mechanism results in legal estoppel for the third-party filer, the following distinctions may be drawn between the estoppel created by a post-grant proceeding and that created by an inter partes reexamination proceeding.
1. The forums in which legal estoppel applies are broader in post-grant review than in inter partes reexamination. The estoppel created by post-grant review applies to all USPTO proceedings, ITC proceedings, and district court litigations. The estoppel created by inter partes reexamination applies only to district court litigations.
2. The time at which the estoppel attaches is much earlier for post-grant review. For inter partes reexamination, all appeals need to be exhausted before the estoppel would attach, but the estoppel from a post-grant review attaches upon the final written determination by the PTAB.
3. The scope of estoppel differs slightly as well. In inter partes reexamination, the third party is estopped from relying on any grounds that were raised or that could have been raised during the inter partes reexamination. Estoppel under post-grant review is applicable only against grounds that were raised or those that reasonably could have been raised. Thus, a reasonableness standard is applied to evaluate whether estoppel should apply when a post-grant review has been conducted.
4. Last and perhaps most significant, because the available grounds under post-grant review are more numerous than those under inter partes reexamination, the estoppel provisions may preclude the third party from raising nearly all invalidity defenses in litigation. This has a particularly significant impact when considering the rapid nature of the post-grant review mechanism and the consequential rapidity of legal estoppel attaching as a consequence of post-grant review.
The procedural schedule for Post-Grant Review is included below:
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.