A new tool was created by the America Invents Act in Section 6 that allows for third parties to challenge issued patents on almost any grounds. This new proceeding is titled “post-grant review” and is formed by the creation of 35 U.S.C. §§ 321-329. Post-grant review works along with inter partes review to replace inter partes reexamination.
A third party may request a post-grant review to challenge any claim as unpatentable on any ground that could be raised under 35 U.S.C. § 282(b) paragraphs (2) or (3). This means the third party can challenge a claim on any grounds dealing with statutory subject matter (35 U.S.C. § 101), novelty (35 U.S.C. § 102), obviousness (35 U.S.C. § 103), or insufficient or incorrect specification (35 U.S.C. § 112) with the exception of failure to disclose best mode, which is no longer a sufficient basis for rendering a patent or claim invalid or unenforceable. The grounds on which a claim can be challenged is more inclusive in a post-grant review than it is in an inter partes review and inter partes reexamination, where a claim can only be challenged on the basis of novelty or obviousness.
The allowable documents in a request for a post-grant review are more inclusive than for inter partes review. Documents able to be submitted are patents and printed publications, as well as other factual evidence or expert opinions relied on to support the challenge to any claim. The request for a post-grant review must identify the real parties in interest and the grounds on which each claim is challenged, and must be served on the patent owner. A third party is barred from requesting a post-grant review if it or the real party in interest has already filed a civil action challenging the validity of the patent.
Once a post-grant review is requested, the patent owner will have the opportunity to respond, setting forth reasons why no review should be instituted. If the Director determines the information presented in the petition and patent owner’s response demonstrates that it is more likely than not at least one claim challenged in the petition is unpatentable, a post-grant review will be instituted. A post-grant review will also be instituted if the petition raises a novel or unsettled legal question that is important to other patents or patent applications. As with all proceedings challenging granted patents, the petition will be made public by the Director as soon as possible.
If the Office does institute a post-grant review, the patent owner will have an opportunity to present evidence detailing why each claim is valid, propose a substitute for any challenged claim, or cancel any challenged claim. Both parties will also have the opportunity to conduct discovery. If the two parties come to a settlement regarding patentability, the Office will terminate the post-grant review upon a joint request, unless it has already decided the merits of the proceeding before the request to terminate was filed.
The decision by the Director whether to institute a post-grant review is final and nonappealable. Also, the petitioner, real party in interest, or privy, after the final written decision by the Patent Trial and Appeal Board, is prohibited from filing a civil action under 28 U.S.C. § 1338 (or in a proceeding before the International Trade Commission) or requesting a proceeding before the Office on any ground that the petitioner raised or reasonably could have raised during the post-grant review. Either party is allowed to appeal the decision of the Patent Trial and Appeal Board.
A post-grant review may be requested no later than nine months after the grant of a patent or issuance of a reissue patent. Once the time for requesting a post-grant review has ended, an inter partes review may be utilized.
Upcoming Events/Key Dates
Post-grant review became effective on September 16, 2012, and generally applies to patents issuing from applications subject to the first-inventor-to-file procedure. Post-grant review also applies to those business method patents challenged under the transitional program, no matter when those patents issued. The USPTO published its final rules regarding implementation of post-grant review on August 14, 2012.