Post-Grant Review

 
Those seeking to challenge the validity of a patent outside the courtroom have extended options, including the newly established Post-Grant Review, a counterpart to Inter Partes Review. Similar to other post-grant proceedings, a party who is not the patent owner and has not previously filed a civil action seeking a declaratory judgment of invalidity, may petition for Post-Grant Review of one or more claims. Patentability of the claims under review is decided by the PTAB. The decision can be immediately appealed to the U.S. Court of Appeals for the Federal Circuit by either the patent owner or the patent challenger.
 
Post-Grant Review differs from Inter Partes Review and other post-grant proceedings in that:
 
  • A petition for Post-Grant Review may be requested within nine months after the grant or reissue of a first-inventor-to-file patent.
  • The standard of review requires the petitioner to show that it is more likely than not that at least one of the claims challenged in the petition is unpatentable or, alternatively, that there is a novel or unsettled legal question that is important to other patents or patent applications.
  • Discovery may be limited to evidence directly related to factual assertions advanced by either party in the proceeding, including cited documentation, cross-examination, and information inconsistent with positions advanced during the post-grant review proceeding; and either side may move for additional discovery if the parties cannot mutually agree.
  • The petitioner’s request to cancel one or more claims of a patent may be grounded on prior art issues such as lack of novelty and obviousness (similar to an Inter Partes Review); as well as other grounds not reviewable under an Inter Partes Review proceeding, such as patent-eligible subject matter, written description, enablement, and indefiniteness. Unlike Inter Partes Review, prior art-based challenges are not limited to patents or printed publications.

Post-Grant Review Process:

Strategy & Foresight

Brooks Kushman understands the intricacies and implications of post-grant challenges, how to staff such matters, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to vigorously represent our clients and prevail in such administrative proceedings, and coordinate efforts with possible parallel district court litigation and on appeal, recognizing the impact a decision can have on a patent portfolio, market opportunities, and the bottom line. At the same time, our prosecution team works closely with our clients to develop and implement client-specific strategies to help insulate a patent portfolio from a post-grant challenge. In conjunction with our Patent Searchers, we can track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art—to anticipate potential future challenges and institute proactive measures to minimize any potential risk. In view of the changing landscape and complex and competing interests at play, Brooks Kushman is able to leverage its depth of experience in all facets of intellectual property, to help our clients maintain competitive advantage.

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