Chapter §22.03 Post-Grant Review

• Jurisdiction: United States

§22.03 Post-Grant Review

[A] Introduction

Responding to high-level calls for a less expensive and more widely available system to challenge the validity of issued patents,⁸⁰² Congress in the America Invents Act of 2011 implemented a new adjudicative proceeding termed "post-grant review." It is similar, but not identical, to the opposition system that has successfully operated for a number of years under the European Patent Convention.⁸⁰³ The AIA's legislative history indicates that Congress intended the post-grant review process

to enable early challenges to patents, while still protecting the rights of inventors and patent owners against new patent challenges unbounded in time and scope. The Committee believes that this new, early-stage process for challenging patent validity and its clear procedures for submission of art will make the patent system more efficient and improve the quality of patents and the patent system. This new, but time-limited, post-grant review procedure will provide a meaningful opportunity to improve patent quality and restore confidence in the presumption of validity that comes with issued patents in court. ⁸⁰⁴

Sections 321 through 329 of the Patent Act as amended by the AIA govern post-grant review.⁸⁰⁵ Section 326 of the Patent Act requires the USPTO Director to prescribe regulations for the conduct of post-grant review; the agency issued its final rules in August 2012.⁸⁰⁶ Specifically, the USPTO's rules governing post-grant review are codified in Title 37 of the Code of Federal Regulations, Chapter 1, Subchapter A, Part 42, Subpart C ("Post-Grant Review").⁸⁰⁷

The AIA-implemented post-grant review proceeding does not replace ex parte reexamination but rather exists in addition thereto.⁸⁰⁸

Any person who is not the patent owner can petition the USPTO to authorize its post-grant review, with the petitioner's goal being to invalidate the patent by persuading the USPTO to cancel its claims. The petitioner need not be practicing the patented invention (in other words, need not be a potential infringer). This is a significant difference from the pre-AIA framework under which patent validity challenges were largely limited to expensive, long-running federal court proceedings involving parties who were accused of infringing the patent (or at least in legitimate danger of being sued therefor).⁸⁰⁹

[B] Effective Date

Questions about the operation of the new post-grant review procedure will remain open for some time. Any ambiguities in the procedural or substantive aspects of post-grant review will not be resolved with finality for several years into the post-America Invents Act era.

Although the AIA-implemented sections 321 to 329 of the Patent Act that govern post-grant review took effect on September 16, 2012, they "shall apply only to patents described in section 3(n)(1)" of the America Invents Act of 2011.⁸¹⁰ In other words, a patent subject to post-grant review must contain a claim to a claimed invention having an effective filing date on or after March 16, 2013; or, alternatively, the patent must contain a specific reference under 35 U.S.C. §120 (continuation or continuation-in-part application), 35 U.S.C. §121 (divisional application), or 35 U.S.C. §365(c) (international application designating the United States and entitled to benefit of earlier-filed application) to a patent that contains such a claim.⁸¹¹ With U.S. patent application pendency averaging over two years, few patents subject to challenge via post-grant review issued before 2015.⁸¹²

As of March 31, 2020, the USPTO's database identified 212 filings of petitions for post-grant review.⁸¹³ Future updates of this treatise will analyze the Federal Circuit decisions resulting from the appeals that will inevitably be filed from the PTAB's decisions in the PGRs resulting from these petitions.

[C] Nine-Month Window

Perhaps the most important procedural aspect of post-grant review to understand is that such review may be sought only during the nine-month "window" following the issuance of a patent.⁸¹⁴ Post-grant review is not available throughout the life of the patent, in contrast with ex parte reexamination and the AIA-implemented inter partes review. Other procedural aspects of post-grant review largely track those specified for inter partes review.⁸¹⁵

[D] Scope

The most important substantive aspect of post-grant review is the broad scope of the review; that is, a petitioner can assert a relatively large number of grounds to establish patent invalidity (in contrast with ex parte reexamination and inter partes review). Specifically, a petition for post-grant review can raise "any ground that could be raised under paragraph (2) or (3) of [35 U.S.C.] section 282(b) (relating to invalidity of the patent or any claim)."⁸¹⁶ Such grounds include patent-ineligible subject matter or lack of utility under 35 U.S.C. §101; anticipation (i.e., lack of novelty) under 35 U.S.C. §102; obviousness under 35 U.S.C. §103; and non-enablement, failure to satisfy the written description of the invention requirement, and claim indefiniteness under 35 U.S.C. §112. Presumably double patenting can also be asserted as a ground relating to invalidity.⁸¹⁷

Post-grant review cannot be used to assert a failure to satisfy the best mode requirement of 35 U.S.C. §112⁸¹⁸ or the defenses of noninfringement and unenforceability (the latter traditionally viewed as including inequitable conduct and patent misuse).⁸¹⁹

[E] Standard to Grant Review

The threshold standard for the USPTO Director to grant a petition for post-grant review is whether "the information presented in the petition . . . , if not rebutted, would demonstrate that...