.png)
Patent disputes and challenges are complex legal undertakings that require an in-depth understanding of available mechanisms for contesting patent validity. The United States Patent and Trademark Office (USPTO) offers several post-grant proceedings—Post-Grant Review (PGR), Inter Partes Review (IPR), and Covered Business Method (CBM) reviews—which provide streamlined, cost-effective alternatives to traditional litigation for resolving patent disputes. This blog explores the nuances of these proceedings, highlighting their respective advantages and key distinctions.
Post-Grant Review (PGR)
Post-Grant Review allows interested parties to challenge the validity of a patent shortly after it has been granted. The process begins before the Patent Trial and Appeal Board (PTAB) and must be initiated within nine months of the patent’s issuance. A PGR petition can be based on a wide range of grounds, including:
⦁ Novelty
⦁ Obviousness
⦁ Statutory subject matter
⦁ Written description
⦁ Enablement
⦁ Definiteness
Scope: PGR is applicable only to certain types of patents, such as first-inventor-to-file patents and select business method patents. Importantly, the estoppel effects of a PGR—which prevent the petitioner from raising similar issues in future proceedings—extend to USPTO, International Trade Commission (ITC), and district court cases.
Inter Partes Review (IPR)
Introduced as part of the America Invents Act (AIA), IPR allows parties to challenge the validity of a patent after it has been granted. Unlike PGR, IPR petitions can be filed against any patent, but with limitations:
The petition can be filed only after nine months from the date of issuance, or after any pending PGR proceedings have concluded.
Grounds for challenge are limited to novelty and obviousness based on patents and printed publications.
Standard of Review: IPR requires the petitioner to demonstrate a “reasonable likelihood” that at least one challenged claim is unpatentable.
Estoppel: Estoppel from IPR applies to district court proceedings but is more limited compared to PGR.
Key Case Law: In Aqua Products Inc. v. Joseph Matal, the burden of proof in IPR shifted from the patent owner to the petitioner, requiring the petitioner to prove unpatentability.
Covered Business Method (CBM) Review
CBM reviews specifically target patents related to financial products or services. These reviews are part of the Transitional Program for CBM patents under the AIA and allow parties to challenge patents that are not considered “technological inventions.”
Eligibility: CBM reviews are available for patents granted on or after September 16, 2012. Notably, patents covering technological inventions are excluded from CBM review eligibility.
Grounds for Challenge: Similar to PGR, CBM reviews allow challenges based on a broad range of issues, including written description and enablement deficiencies.
Limitations: CBM reviews cannot be initiated while a PGR could still be filed against the patent. Additionally, the petitioner must demonstrate that the patent claims pertain to financial methods or corresponding apparatuses.
The Role of Legal Expertise in Post-Grant Proceedings
Effectively navigating PGR, IPR, and CBM proceedings requires specialized knowledge. These hearings are fundamentally trials conducted before PTAB judges with technical and scientific training. As such, the interplay between these proceedings and district court litigation necessitates a comprehensive strategy that considers timelines, evidence, and potential appeals.
Experienced legal counsel is essential for managing these cases, particularly in preserving issues for appeal before the U.S. Court of Appeals for the Federal Circuit (CAFC). Firms with dual expertise in patent prosecution and litigation are well-equipped to handle the nuances of these proceedings while preparing for potential downstream litigation.
Each proceeding has unique requirements, advantages, and limitations, making it crucial to choose the most appropriate option based on factors such as the nature of the patent, timing, and the grounds for invalidity. By partnering with experienced legal professionals who understand these processes and their implications, petitioners and patent owners can effectively navigate the complexities of the PTAB and beyond.
Sources Referred-
Comments