A post-grant proceeding is one that refers to a practice before the United States Patent & Trademark Office (USPTO) where a patentee attempts to strengthen an issued patent or a third party challenges the validity of an issued patent after the original prosecution has closed.
Arent Fox’s Post-Grant Proceedings practice group draws on the strength of its patent lawyers and litigators to strategically assist clients with reexaminations, reissues, supplemental examinations, and the new procedures under the America Invents Act (“AIA”) to challenge the validity of issued patents using Post Grant Review (“PGR”), Inter-Partes Review (“IPR”) and Covered Business Method (“CBM”) procedures. The AIA of 2011 ushered in a number of new rules regarding how issued patents can be reviewed or challenged by the USPTO. These changes include, for example:
- As of September 16, 2012, Inter-Partes reexaminations are replaced by Inter-Partes Review.
- The Board of Patent Appeals and Interferences has been replaced with the Patent Trials and Appeals Board (PTAB) which utilizes administrative law judges to handle PGRs, IPRs, CBMs, and derivation proceedings.
- The new post-grant procedures such as PGRs and IPRs have expedited schedules by statute to conclude the review of patents in no later than 12-18 months.
- Post-grant procedures allow for limited discovery, document productions, depositions and trials on validity, with appeals taken directly to the US Court of Appeals for the Federal Circuit (the Federal Circuit).
- Post-grant procedures can be settled any time during the proceedings, allowing clients greater leverage when using the post-grant procedures when faced with litigation.
Arent Fox’s attorneys can assist clients in strategically planning for defensive patent litigation or to defend against attacks on the validity of their patents by carefully navigating these new rules and procedures. Brief summaries of these post-grant proceedings including both new and old procedures are discussed below.
The PGR procedure applies to patents that have an effective fling date on or after March 16, 2013. A PGR must be brought within nine (9) months after the issue or reissue date of a patent. A significant difference between PGR and other forms of review, such as previous inter-partes reexamination or ex-parte reexamination is that in PGR a non-patent owner can challenge a patent on multiple grounds of patentability under 35 U.S.C Sections 101, 102, 103 and 112, whereas previous reexamination challenges were limited to 35 U.S.C. Section 102 and 103 (e.g., anticipation and obviousness grounds). Additional grounds of challenge “may also be satisfied by showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”
Unlike the previous standard of challenge under inter-partes or ex-parte reexamination which required a “substantial new question of patentability,” a PGR can be instituted by the PTAB if a petition by a third party must establish that it is “more likely than not that at least one of the claims challenged in the petition is unpatentable.” The PTAB has a statutory deadline to complete the review within one (1) year although this period may be extended up to six (6) months for good cause. A final written decision by the PTAB will also trigger an estoppel to further challenges of invalidity on the same patent by the third party requester or its privies in proceedings before the USPTO, civil actions and proceedings before the International Trade Commission (ITC) based on grounds the petitioner “raised or reasonably could have raised during post-grant review.” It is important to carefully consider the estoppel effects of a PGR on parties in litigation and their privies before collaterally attacking the validity of the patent at the USPTO.
The new Inter-Partes Review (IPR) procedure went into effect on September 16, 2012 and replaces the previous inter-partes reexamination practice. An IPR can be filed for any currently issued patent. For patents that have an effective filing date of March 16, 2013 or thereafter, IPR can be initiated after nine (9) months after the grant of a patent or after completion of PGR of the patent. If used to challenge a patent after litigation has commenced against a party, an IPR must be filed within twelve (12) months of the complaint being served against the petitioner or the real party of interest. To successfully petition for an IPR the challenger must show in a petition for the IPR that there is a “reasonable likelihood” that at least one claim of the challenged patent is invalid.
An IPR will be unavailable if the petitioner or real party of interest has filed a civil action challenging the validity of the patent before filing the petition for IPR. Unlike PGR, an IPR can only be brought only on grounds that a patent is invalid as being anticipated (Section 102) or obvious (Section 103) based on patents and printed publications. Like PGRs, the PTAB must issue a final written decision within one (1) year of a decision on the petition, which can be extended up to six (6) months for good cause. A major difference between IPR and the previous inter-partes reexamination is that the PTAB sets a case schedule to permit limited discovery and allow for depositions of witnesses who submit affidavits. The estoppel effect of IPR is more limited than PGR since the petitioner, privy or real party of interest can only raise patents and printed publications, but will be estopped in future proceedings based on any ground the “petitioner raised or reasonably could have raised during the inter-partes review.”
Post-Grant Review for Covered Business Method (CBM) Patents
CBM is a post-grant procedure available as of September 16, 2012 for any issued patent that claims 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, but does not include patents for “technological inventions.” A CBM review may only be brought by petitioners who have been sued or charged with infringement of that patent. The CBM rules also specifically provide guidelines for the district court to stay co-pending litigation on the patent. The estoppels effect of a CBM review is more limited and applies only to grounds raised during the CBM review proceeding.
The AIA left the current ex-parte reexamination procedures largely unchanged. Ex-parte reexamination, as the name implies, is a reexamination procedure whereby a requester files a reexamination request of an issued patent and then no longer participates in the proceedings, with limited exceptions prior to issuance of an office action. The requester may submit prior art based on patents and printed publications only and the inquiry is limited to whether the patent is anticipated (Section 102) or obvious (Section 103). An ex-parte reexamination request will be granted if there is a “substantial new question of patentability” which limits the prior art the requester can submit, e.g., previously considered prior art is less likely to be considered unless it presents the prior art in new light. Unlike inter-partes review, no legal estoppel attaches to the prior art submitted to the patent office in an ex-parte reexamination, although, as a practical matter, it may be more difficult to prevail in litigation on the same prior art if it has already been considered by the patent office.
The supplemental examination procedure is available as of September 16, 2012 and applies to any patent regardless of issue date. A patentee may use the supplemental examination procedure to consider, reconsider or correct information believed to be relevant to the patent after issuance. Unlike the previous reexamination procedures, the information submitted by the patentee is not limited to prior art patents or printed publications. Supplemental examination can be used by patentees as a safe harbor to inequitable conduct and enforceability claims because the procedure specifically contemplates that a patent cannot be held unenforceable on the basis of conduct or non-disclosures from previous examinations if the information was considered or reconsidered during the supplemental examination.
The derivation proceedings are new proceedings available under the AIA for the first-to-file patents and patent applications, which replace the interference proceedings. The derivation proceedings are designed to ensure the person obtaining a patent is a true inventor and did not derive from another. That is, if there is a dispute between two applicants as to inventorship, a derivation proceeding can be instituted by submitting a petition to the PTAB. The petition for a derivation proceeding must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner and must be made under oath and supported by substantial evidence. The PTAB will decide the petition for derivation and conduct a derivation proceeding. Once a derivation proceeding is instituted, the PTAB will issue a written final decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization. The decision of the PTAB may be appealed to district court or the Federal Circuit. Also, parties to the derivation proceeding may settle any time during the proceeding as long as the PTAB does not find their settlement inconsistent with the evidence of the record.
Patent owners can correct certain errors in issued patents through a reissue procedure. For example, the reissue procedure allows for correcting inaccuracies in an issued specification or failure to claim foreign priority in an issued patent, which occurred without any deceptive intention by the patent owners. Also, under certain circumstances (e.g., when there is no prosecution estoppels), patent owners can amend claims of an issued patent to broaden the scope of the issued claims within two (2) years of the grant of the patent, as long as support for such broadening amendments can be found in the issued specification.