Post Grant Procedures

The Odds Are Still Against Patent Owners in Post-Grant Proceedings, but Getter Better Every Day

Historically, challenging a patent at the USPTO was cumbersome. However, changes in federal law for post-grant challenges of patents make it much simpler and quicker for parties to challenge granted patents. Since the American Invents Act (AIA), the odds have seemed stacked in favor of the patent challenger.

To mount a challenge before the Patent Trial and Appeals Board (PTAB) an individual or business prepares and presents a petition to the PTAB arguing that one or more claims of a previously-granted patent should not have been granted, and are in fact, unpatentable. If the PTAB finds that it is more likely than not the petitioner is correct, and claims are unpatentable, the petition is granted, and the patent owner is left defending his/her patent.

During the first several years after implementation of the new AIA post-grant proceedings, the PTAB found in favor of challengers in the vast majority of cases. Accused infringers find that post-grant proceedings can provide an excellent, lower-cost tool for eliminating patents and potentially avoiding expensive litigation. Conversely, many patent owners may find not only that their newly-granted patents may be at risk, but valuable patents issued years prior may be at significant risk.

While the PTAB has perhaps earned its reputation as a patent “death squad”, recent court rulings and new USPTO regulations seem to suggest that the PTAB may be trying to shed its ruthless reputation and let more patents live another day.

Post-Grant Proceedings

Since the passage of the AIA, four types of post-grant proceedings are allowed:

• Post-grant reviews (PGRs) allow broadly-based challenges during the first nine months after a patent has been granted. Challenges may be based on grounds of obviousness, lack of novelty, patent ineligibility, or for not meeting written description or enablement requirements.
• Inter partes reviews (IPRs) may be filed nine months after granting of a patent, but challenges are limited to those based on obviousness or a lack of novelty. Unlike post-grant reviews, which may rely on a wide variety of types of evidence, only prior patents or printed publications may be relied upon in inter partes reviews.
• Covered business method (CBM) reviews may be used to challenge patent claims that are directed to “covered business methods”. Under the AIA, a covered business method patent is “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Covered business method reviews may be brought nine months after the grant of a patent, and only when a party has been charged with infringement. As with PGRs, CBM reviews may be based on essentially any ground of invalidity.
• Ex parte reexaminations allow a party to challenge a patent based on a “substantial new question of patentability.” Unlike the new AIA post-grant proceedings, i.e., PGRs, IPRs, and CBM reviews, this pre-AIA post-grant proceeding limits the participation of the challenger or “requester.” After filing a petition requesting that the USPTO re-examine the patent claims, the requester steps aside, and if the request is granted, the patent owner defends the claims at the USPTO in a proceeding with a patent examiner. Although the cost of an ex parte reexamination is significantly lower than that of the new post-grant options, the challenger’s inability to participate in the process beyond the initial filing means that a PGR, IPR or CBM review is more often preferred over an ex parte reexamination.

While claims of pending patent applications are reviewed initially by the U.S. Patent and Trademark Office under the “broadest reasonable interpretation” (BRI) standard, claims in the new post-grant proceedings are reviewed by the PTAB under the arguably-narrower Phillips standard, which is also the review standard of federal courts.

Timing

Compared to litigation, decisions come quickly in post-grant proceedings. After the filing of a post-grant proceeding petition, the patent owner may file a preliminary response within three months, arguing that the request should not be granted. The PTAB must then decide whether to The AIA “institute” the proceeding. If so, the AIA mandates that the PTAB must issue a decision within one year of a decision to institute.
At the same time, even if the parties to a post-grant proceeding reach a settlement after institution, the PTAB may still issue a decision. The agreement notwithstanding, the decision could invalidate a patent.

Keys to Success

Whether you’re a patent owner defending your patent or a petitioner seeking to challenge a competitor’s patent, our intellectual property attorneys can help.

Even before a patent is granted, businesses can take steps to improve the chances that their patent-to-be will be able to survive a post-grant challenge. For example, conducting a thorough prior-art search before drafting your patent application allows you to craft patent claims in consideration of the art that may be used later against your patent in a post-grant proceeding. Drafting relevant, commercially-valuable dependent claims as alternatives to your primary independent claims means that even if your main claims should fall post-grant, you may still possess enforceable, valuable dependent claims.

If you’re a business seeking to eliminate a competitor’s patent, uncovering and understanding the best prior art, devising an effective strategy, and drafting an impactful petition remain keys to successfully challenging a patent in a post-grant proceeding.

Regardless of whether you wish to challenge a patent, or have had a post-grant review notice served on you, it is imperative to consult with a patent attorney familiar with post-grant proceedings.