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Post-Grant Review

Posted Saturday, January 26, 2013 by Mike Cicero

A new Post-Grant Review procedure has been instituted with the America Invents Act with the intent “to enable early challenges to patents, while still protecting the rights of inventors and patent owners against new patent challenges unbound in time and scope.” The procedure may be instituted by anyone except the owner of the patent at issue even if that person does not meet the traditional standing requirements that would be necessary to challenge the patent in court. Moreover, the procedure is broader than the reexamination procedure in at least two ways. First, the grounds upon which the patent may be challenged are broader than under reexamination in that they encompass any ground that my render the patent invalid or unenforceable. Second, petitioners are not limited to submitting patents and printed publications as they would be in a reexamination request. Notably however, a petitioner must file for a post-grant review within a limited window of nine months after the patent issues.

A Post-Grant proceeding will only be instituted if the filed petition either: shows that it is more likely than not that one or more claims is not patentable; or raises a novel or unsettled legal question that is important to other patents or applications. A panel of three administrative law judges from the new Patent Trial and Appeal Board (the board which replaced the Board of Patent Appeals and Interferences due to interference proceedings being phased out by the First to File system) will conduct the proceedings.

Oddly enough, the parties to a Post-Grant review will have the ability to settle with one another to end the proceeding. I view this as odd because if a petition is filed that shows that it is more likely than not that one or more claims is actually not patentable it seems that this issue is not mitigated simply because the parties have reached a settlement agreement between themselves and that it would still be worth deciding whether the subject matter of the claims should in fact be within the public domain. I’ve heard at least one patent practitioner express concern that the Post-Grant Review procedure may provide a lesser cost alternative for parties to file less than merit-full but not quite frivolous petitions in hope of extracting settlements in a similar manner to how some have used patent infringement suits to do the same. Hopefully, this potential problem will not outweigh the benefits of being able to quickly and cheaply challenge questionable patents and the new procedure will have a net positive impact on our patent system.

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