After you have achieved the award of a patent, you may still be subject to challenge. Part of the new patent law (America Invents Act or AIA) is the procedure called a Post Grant Review. The procedure gives third parties 3 months after the grant of your patent to challenge the award. (See below) Note that Post Grant Review applies only to patents issued on applications filed after March 16, 2013. (This is the effective date of the “first to file” protocol.) Therefore it is unlikely any proceeding will commence until late 2014 or early 2015.

Although Post Grant Review may initially appear as a mechanism for pro se litigants to challenge competing patents of competitors, the statute appears adequately complex (combined with future implementing regulations) to require legal support.

Another feature that may impact the utilization of Post Grant Review is the issue of litigation estoppel. The issue of estoppel was credited with causing only the limited adaptation of Inter Parties Re-examination. (Estoppel blocks a party from re asserting an argument or defense in a subsequent legal proceeding if that argument or defense could have been asserted in the Inter Parties Re-examination.) It is not clear whether litigation estoppel applies to Post Grant Review proceedings. It clearly applies to the new procedure entitled Inter Partes Review (discussed elsewhere). 35 USC §315(e)(1).

The Post Grant Review is intended to be a fast process. The time period for conducting a proceeding is limited to 12 months. One important difference with the old procedure (Inter Parties Reexamination) is that the examiner is not involved. The Post Grant Review is conducted by the Patent Trial and Appeals Board.

The Post Grant Review proceeding is initiated by a third party filing a petition. A significant factor is that the petition can be filed on any grounds such a defects in the written description or lack of enablement in addition to lack of novelty or obviousness. The issued patent can be challenged for reasons other than prior art patents and publications. Examples could be prior use or lack of enablement.

The patent holder can rebut the allegations in the petition. Upon consideration by the Board, the PTAB (the Board) must find that it is more likely than not that at least one of the claims challenged is unpatentable. This is the standard that must be met by the petitioner. Thus the right of Post Grant Review is not automatic. Also it is not clear what constitutes the standard of “more likely than not”. Perhaps this will be clarified in future implementing regulations. (Note that Post Grant Review will occupy the space of the currently existing Inter Parties Re-examination. Therefore it can be expected that many of the features of the Inter Parties Re-examination will be adopted into the regulations for Post Grant Review.)

Note that for business methods patent, the petition can be filed at anytime. During the transition period of implementation of the AIA, it is not limited to the 9 month period. Section 18(a) of the AIA.

October 11, 2013