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A Balanced View of Post-Grant Review

by Orlando Lopez

A large portion of the rules needed to implement the America Invents Act (AIA) will go into effect on September 16, 2012.  The rules for post-grant review, although effective September 16, 2012, will not actually be applicable until March 16, 2013.  As these deadlines are approaching, we present in this and a following post, some thoughts and views on the post-grant review and the expansion of the references available for denying a grant of a patent under the US first-to-file system.  These thoughts were presented at the Navy Intellectual Property Seminar and the Hispanic National Bar Association annual convention earlier this year.

The patent reform bill, which became the America Invents Act, had a gestation period longer than any animal, but even in the early incarnations, a post-grant review was included.  Almost all other patent systems have some form of post-grant review, such as the European opposition.  The stated purpose of Congress in adding this to our patent system was to provide an alternative to patent litigation and to improve the quality of patents; however, as stated in the last committee report, there was also a concern that harassment of the patent owner should be prevented.  Our version of post-grant review is shaped by these ideas.

As in most other patent systems, there is a finite period — nine months — in which to challenge the granted patent through post-grant review.  Like many other patent systems, the review is performed by the Patent Trial and Appeal Board.  The Board reviews a petition by a challenger and the petition is granted only if it is more likely than not that at least one claim challenge for the patent owner would be held invalid.  The statutory grounds for challenging a granted patent under post-grant review are wider than under re-examination, or inter partes review challenges under 35 USC 101 (patentable subject matter), 35 USC 102 (patentability, but not best mode),  35 USC 103 (obviousness) and 35 USC 112 (enablement, written description and indefiniteness) are allowed as compared to only challenges under 102 and 103 in inter partes review or re-examination.  However, the proposed claim construction standard is the same as in patent prosecution — the broadest possible reasonable construction in view of the specification.

Being a US post-grant review, it has more discovery than the other post-grant reviews.  There is cross-examination of the declarants (experts), but the parties need to provide information inconsistent with the position advanced (these may not be good for the petitioner).  Additional discovery requires a showing of good cause in the proposed rules (I would have preferred the interest of justice).  And then there is the statutory estoppel of actions at the courts, ITC and the USPTO on any grounds raised or that could have been raised if the petitioner does not prevail.

Overall, it’s a balance between providing an alternative to patent litigation and strengthening the quality of patents, and preventing harassment of the patent owner.  One concern of Congress was that the present re-examination is a long drawn process.  To avoid this, post-grant review is slated to end in one year with some extensions of time available.  The end result is a post-grant review process that is speedy (about one year in duration), and balanced between a less expensive alternative to litigation and a process that does not promote harassment of the patent owners.


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