Invalidating Someone Else's Patent - Part 3: Post Grant Reviews. Episode 79

Reviewing Previous Invalidation Procedures

In the last two episodes, I discussed two different ways to invalidate a patent: ex parte reexaminations and inter partes reviews. I covered the differences between them and how they work. In this episode, I will discuss another procedure used to challenge a patent’s validity—post-grant review (PGR).

If you recall from the last episode, inter partes review (IPR) cannot be requested until nine months after a patent has been granted. But what if a patent has just issued and you want to challenge it right away?

Additionally, what if you don’t want to use the ex parte reexamination procedure because it has too many limitations? This is where post-grant review comes in. It is specifically designed for patents that have just recently issued (within nine months) and that you believe should not have been granted.

Advantages of Post-Grant Review

One of the biggest advantages of post-grant review is that you can challenge a patent on more grounds than in other procedures.

In ex parte reexaminations and inter partes reviews, you can only argue invalidity based on lack of novelty or obviousness. However, in a post-grant review, you can argue invalidity on any grounds, including:

• Subject matter eligibility (for example, if the patent covers a natural phenomenon or an abstract algorithm that should not have been patented).

• Public use or on-sale activity (evidence that the invention was already in public use or available for sale before the filing date).

• Other types of public disclosures that were not necessarily printed publications.

  
  

The only restriction is that you cannot argue invalidity based on failure to disclose the best mode of the invention. However, in most cases, this would not be a strong argument anyway, so it’s not a significant limitation.

Another major advantage of post-grant review is that, unlike ex parte reexaminations and inter partes reviews—where you are limited to using patents or printed publications as evidence—you can introduce other types of evidence in a post-grant review, such as:

• Live demonstrations.

• Public sales.

• Non-published disclosures.

These types of evidence can be crucial in invalidating patents that should not have been granted.

Filing a Post-Grant Review Petition

To initiate a post-grant review, you must file a petition, similar to an inter partes review petition. The Patent Office will then determine whether the petition meets the necessary standard to proceed.

For a post-grant review to be granted, you must show that it is more likely than not that at least one of the challenged claims is unpatentable. This is a different standard than for inter partes review, where the requirement is a reasonable likelihood that you will prevail in invalidating at least one claim. It is also different from the ex parte reexamination standard, which requires showing a substantial new question of patentability.

Although the wording of these standards varies, the practical differences in how they affect the likelihood of success are not entirely clear.

Like inter partes review, you cannot request a post-grant review anonymously. You must disclose your identity as the petitioner.

How the Post-Grant Review Process Works

Once your petition is filed, the process follows a structure similar to an inter partes review:

• The patent owner has an opportunity to respond.

• The Patent Office decides whether to institute the review.

• If the review is instituted, a formal schedule is set, including deadlines for discovery, amending claims, motions to exclude evidence, and oral hearings.

A final decision is typically issued within one year from the date the post-grant review petition is granted.

When to Consider Post-Grant Review

Post-grant review is particularly useful when a patent has just been issued and you believe it was granted in error. It is especially valuable if you have evidence that the patent is invalid based on something other than a prior patent or printed publication—such as a public demonstration, sale, or other non-documented disclosure.

If you miss the nine-month deadline for filing a post-grant review, you will likely need to challenge the patent in court, which is significantly more expensive. Court litigation can cost millions of dollars, while post-grant review provides a streamlined and more affordable alternative.

Conclusion

That’s the basics of post-grant review. If you are considering invalidating a recently issued patent, this may be your best option—especially if you have evidence that isn’t limited to patents or printed publications.

I’m Adam Diament, and until next time, keep on inventing!