Post-Grant Review Under the AIA

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Background

Post-Grant Review is a trial before the PTAB subject to the procedures set forth in subpart A. Proposed 37 CFR §42.200(a).  The Post-Grant Review should be concluded within one year, but this can be extended up to six months, by the Chief Judge of the PTAB.  Proposed 37 CFR §42.200(c).

Any person other than the patent owner may petition for a Post-Grant Review, provided that the Petition has not previously challenged the patent in a civil action (Proposed 37 CFR §42.201(a)) and the petitioner is not otherwise estopped (Proposed 37 CFR §42.201(b)).  (The regulation is worded to permit simultaneous of subsequent civil action).

A petition for a Post-Grant Review of a patent must be filed no later than the date that is nine months after the date of the grant of an original or reissue patent. (Proposed 37 CFR §42.202(a)).  However, Post-Grant Review on a reissue patent must be filed within nine months of the issue of the original patent, except as to claims broadened in a broadening reissue.  Proposed 37 CFR §42.202(a)).  For at least the first four years, the Director may impose limits on the number of Post-Grant Reviews.  (Proposed 37 CFR §42.202(b)).

Initiation

The petition for Post-Grant Review must contain:

A certification that the patent for which review is sought is available for Post-Grant Review (i.e., a patent issuing on an application that ever claimed subject matter filed on or after March 16, 2012) and that the petitioner is not barred or estopped from requesting a Post-Grant Review of the patent. (Proposed 37 CFR §42.204(a)).

A statement of the relief requested, identifying

  • the claim (Proposed 37 CFR §42.204(b)(1)).
  • the statutory grounds for the challenge, which is restricted to those listed in 35 U.S.C. 282(b) (2) and (3).  (Proposed 37 CFR §42.204(b)(2)).
  • a statement of how the claim is to be construed.  (Proposed 37 CFR §42.204(b)(3)).
  • a statement of how the construed claim is unpatentable under the asserted statutory grounds.  (Proposed 37 CFR §42.204(b)(4)).
  • The exhibit number of the supporting evidence, and a statement of the relevance of the evidence to the challenge raised identifying the specific portions of the evidence that support the challenge. (Proposed 37 CFR §42.204(b)(5)).

Where the grounds for unpatentability is based on prior art, the petition must specify where each element of the claim is found in the prior art. For all other grounds of unpatentability, the petition must identify the specific part of the claim that fails to comply with the statutory grounds raised and state how the identified subject matter fails to comply with the statute.  (Proposed 37 CFR §42.204(b)(4)).

The petitioner may correct clerical or typographical errors in the petition by motion to the PTAB.  (Proposed 37 CFR §42.204(c)).

The petition and fee (proposed 37 CFR §42.203) must be filed with the PTO, and a copy of the petition and exhibits served upon the patent owner (proposed 37 CFR §42.205)).  (Proposed 37 CFR §42.206)).The proposed fees are:

$35,800 for 1-20 claims

$44,750 for 21- 30 claims

$53,700 for 31-40 claims

       $71,600 for 41 to 50 claims

        $89,500 for 51 to 60 claims

        $35,800 for each additional group of ten claims

(Proposed 37 CFR §42.15(b)(1-6)).  If the Petition is incomplete it will not be assigned a filing date, and the petitioner has until the earlier of one month or the nine months from issuance to correct the deficiency.  (Proposed 37 CFR §42.206(b)). This response must comply with proposed Rule 42.24.

Patentee’s Response to Petition

The patentee has the option to file a preliminary response to explain why no Post-Grant Review should be instituted.  (Proposed 37 CFR §42.207(a)). This response must comply with proposed 37 CFR §42.24, and it cannot include new testimonial evidence (proposed 37 CFR §42.207(b)) nor can the patentee amend the claims (proposed 37 CFR §42.207(d)), but the patentee can disclaim patent claims (proposed 37 CFR §42.207(e)).  The response is due two months from the date of the petition, but the patentee can speed up the process by filing soon, or waiving the right to a response.  (Proposed 37 CFR §42.207(b)).

Instituting Post-Grant Review

If the PTAB decides that the petition would, if unrebutted, demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, then the PTAB should grant Post-Grant Review. (Proposed 37 CFR §42.208(d)).  The PTAB may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.  (Proposed 37 CFR §42.208(a)).  Similarly, the PTAB can deny some or all grounds for unpatentability for some or all of the challenged claims. (Proposed 37 CFR §42.208(b)).

Conduct of Post-Grant Review

Once the Post-Grant Review is instituted, the patentee may file a response to the petition addressing any ground for unpatentability not already denied (Proposed 37 CFR §42.220(a)) by the date provided by the PTAB, or if none within two months from the date Post-Grant Review is instituted.  After conferring with the PTAB, the patentee may make one motion to amend the claims.  (Proposed 37 CFR §42.221(a)).  This motion must identify the support in the original disclosure of the patent for each claim that is added or amended (proposed 37 CFR §42.221(b)(1)) and the support in an earlier filed disclosure for each claim for which benefit of the earlier filing date is sought (Proposed 37 CFR §42.221(b)(2)).  The patentee cannot make amendments that do not respond to a ground of unpatentability involved in the proceeding (proposed 37 CFR §42.221(c)(1)), or which enlarge the scope of the claims or introduce new matter (proposed 37 CFR §42.221(c)(2)).

During the preceding the claims are given their broadest reasonable construction in light of the specification.  (Proposed 37 CFR §42.201(c)).  Within one month from when a trial has been instituted, a petitioner may request authorization to file a motion identifying supplemental information relevant to a ground for which the trial has been instituted. (Proposed 37 CFR §42.223.  In addition to the standard discovery available under the trial regulations, requests for additional discovery may be granted for good cause (proposed 37 CFR §42.224(a)) but is limited to evidence directly related to factual assertions advanced by either party in the proceeding (proposed 37 CFR §42.224(b)).

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.