USPTO Post Grant Proceedings
The Patent Trial and Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO) offers several different proceedings to re-evaluate the patentability of patent claims after those claims have been allowed and have issued in a granted and enforceable US Patent. The available post-grant proceedings include inter-partes review (IPR), post-grant review (PGR), and ex-parte reexaminations.
Inter Partes Review
BHW attorneys can knowledgably and effectively handle all aspects of client representation in IPR proceedings, including petitions, responses, expert declarations and depositions, replies, evidentiary disputes, and oral arguments. We have successfully represented our clients in several IPR proceedings, and have defended favorable PTAB decisions in subsequent appeals.
What is an inter-partes review?
Inter-partes review (IPR) is an adversarial proceeding before the Patent Trial & Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO), in which a petitioner challenges the patentability of one or more claims in an issued US patent, with the grounds for challenge limited to only prior written publications.
Unlike in patent litigation proceedings before a district court, the PTAB does not presume that the subject patent is valid, and the burden of proof against patentability is only that of a preponderance of the evidence.
Anyone can file a petition for IPR, unless that person has already challenged the validity of the patent in a civil suit, or is also the patent owner.
An IPR petition may be filed as early as nine months after the subject patent’s issue date, and in general cannot be filed later than twelve months after the petitioner has been served with a complaint of patent infringement.
The patent owner may respond initially by optionally filing a preliminary response, and then must file a full patent owner’s response if the IPR is instituted.
Upon conclusion of the IPR trial, which results in a final written decision from the PTAB, the petitioner is subsequently potentially estopped from raising any grounds of invalidity in district court that the petitioner raised or could have raised in the IPR.
Post Grant Review (PGR)
Post-grant review (PGR) proceedings are very similar to inter-partes review (IPR) proceedings, except that a PGR petitioner may challenge patentability based on a few additional grounds beyond written publications, as explained below. As with IPR proceedings, BHW attorneys can knowledgably and effectively handle all aspects of client representation in PGR proceedings, including petitions, responses, expert declarations and depositions, replies, evidentiary disputes, and oral arguments.
What is a Post-grant review?
Post-grant review (PGR) is an adversarial proceeding before the Patent Trial & Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO), in which a petitioner challenges the patentability of one or more claims in a recently-issued US patent.
PGR proceedings are similar to IPR proceedings, except the PGR petition must be filed within 9 months of the issuance of the subject patent, and the PGR petitioner may challenge patentability, not only over written publications, but also on the basis of indefiniteness, non-enablement, or ineligible subject matter.
The patent owner may respond initially by filing a preliminary response, and then must file a full patent owner’s response if the IPR is instituted.
As with IPR proceedings, and unlike in patent litigation proceedings before a district court, the patent is not presumed valid in PGR proceedings.
Upon conclusion of the PGR trial, which results in a final written decision from the PTAB, the petitioner is potentially subsequently estopped from raising any grounds of invalidity in district court that the petitioner raised or could have raised in the PGR. Because more bases for patentability challenger are permitted in PGR proceedings than in IPR proceedings, the scope of potential estoppel is also greater.
What is an ex-parte reexamination?
Ex-parte reexamination is a non-adversarial proceeding before the Patent Trial & Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO), in which anyone may request that an issued US patent be reexamined by a patent examiner to determine whether the subject matter that it claims is properly patentable.
A request for reexamination will be granted only if it presents a substantial new question of patentability based on prior patents and printed publications.
Unlike IPRs and PGRs, apart from the reexamination request itself, a third-party requestor loses all subsequent influence over the proceedings. Instead, the reexamination proceeds between only the patent examiner and the patent owner, who may potentially make non-broadening amendments to the claims.
The ex-parte reexamination may conclude with a reexamination certificate that may uphold or change the patent claims, or may completely nullify the patent if no claims survive the reexamination process.
Unlike IPRs and PGRs, ex-parte reexamination proceedings do not typically result in estoppel risk to the requestor.
Strategic Considerations for Post-Grant Proceedings
BHW can competently represent petitioners or patent owners in post-grant proceedings before the Patent Trial & Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO). Often patent owners have no choice but to defend their issued patent(s) when challenged by a petitioner in such proceedings. However, clients who are considering initiating a post-grant proceeding before the PTAB may have several options, the merits of which may be affected by several strategic considerations. BHW can help clients make the best decisions in view of their objectives and budget, and an assessment of the case specifics to estimate risks and the likelihood of alternative outcomes. Indeed, there are a variety of strategic reasons why BHW clients may or may not elect to pursue a post-grant proceeding before the PTAB, rather than, or in addition to, invalidity arguments in federal district court.
Accused infringers can get an additional & more favorable forum to assert invalidity.
A producer of goods or services might get sued for alleged patent infringement by a patent owner or exclusive licensee. Often the accused infringer believes that the asserted claims of the patent are invalid for various reasons, for example that they should not have been allowed by the USPTO in view of prior art that the USPTO was unaware of at the time of patent examination. In such cases, the accused infringer can assert invalidity of the patent as a defense in the federal district court in which the accused infringer was sued.
The accused infringer may also consider challenging the patentability of the asserted claims in a post-grant proceeding before the PTAB of the USPTO. There are several advantages and one important disadvantage in doing so.
Firstly, the PTAB may be a more favorable forum for invalidity arguments than is the federal district court. Specifically, the PTAB does not presume the validity of the patent, and so invalidity must be proven by only a preponderance of the evidence before the USPTO, rather than meeting the higher standard of clear and convincing evidence before the federal district court.
The PTAB is typically comprised of a panel of experience patent examiners, who often have experience and formal education in science and technology, and for that reason may be a favorable first forum to consider claim language interpretation.
Secondly, it is often possible for the accused infringer to challenge the patentability of asserted patent claims in an IPR before the PTAB on the basis of prior written publications, while reserving other grounds of invalidity (e.g. indefiniteness, non-enablement, obviousness over product prior art) and inequitable conduct to argue before the federal district court. This gives the accused infringer two different forums, with two different fact-finders and decision-makers, where a favorable decision by either forum will invalidate the patent.
Stays and reduced litigation costs.
If an infringement suit in district court has been brought against an accused infringer recently enough, then sometimes it can be possible to petition the PTAB to institute a post-grant proceeding early enough to help the accused infringer to seek a stay of the infringement action. Specifically, the accused infringer might offer the institution of the post-grant proceeding by the PTAB as a reason for the district court judge to use discretion to optionally stay the infringement suit in district court, pending the outcome of the post-grant proceeding.
In such cases, the total litigation costs to the accused infringer may be advantageously delayed, with a chance of being ultimately substantially reduced. That is because the average legal fees associated with representation during post-grant proceedings before the PTAB, through trial, are substantially less than the expected legal fees for representation before the district court to defend an infringement suit, through trial.
In certain situations, the earliest possible resolution of an infringement suit is preferred by a client, for example when the client is the subject of a merger or acquisition.
The PTAB is often required to decide the outcome of a post-grant proceeding sooner than the result of an infringement suit (with invalidity defense) would be expected in federal district court.
Ex-parte, or inter-partes?
A disadvantage of ex-parte reexamination proceedings is that after filing the initial request, the requestor (e.g. an accused infringer) no longer has any input into the proceedings, while the patent owner can continue to argue before the PTAB. On the other hand, ex-parte reexamination proceedings typically do not estop the accused infringer from subsequently making the same invalidity arguments before the federal district court.
Upon conclusion of IPR and PGR trials that result in a final written decision from the PTAB, the petitioner is subsequently potentially estopped from raising any grounds of invalidity in district court that the petitioner raised or could have raised before the PTAB. The prospect of such estoppel can be a disadvantage of high strategic importance, and so is nearly always an initial consideration in the decision of whether to petition for IPR or PGR.
On the other hand, the estoppel disadvantage of an IPR or PGR may be tolerable if other grounds for invalidity (which could not be raised before the PTAB) remain available for assertion as invalidity defenses in district court. For example, product prior art may, in some cases, be as important as (or even more important than) written publications to support arguments that claims be held invalid. In such cases, potential estoppel that may prevent invalidity defenses based on written publications may be less important than the advantage of having prior written publications considered by the PTAB as an additional and potentially more-favorable forum. The attorneys at BHW are experienced and competent to assist our clients to decide whether and which post-grant proceeding type might advance their goals, and to represent our clients in any type of post-grant proceeding before the PTAB.
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