Post-Grant Review

May 15, 2017

A Post-Grant Review (PGR) is a trial proceeding conducted by the US Patent Trial and Appeal Board (PTAB) to determine the patentability of one or more claims of a patent that issued from an application filed after March 15, 2013.

The scope of challenges is much broader for PGRs compared to IPRs. In a PGR proceeding, the PTAB can institute a trial on the basis of ineligible subject matter, lack of utility, lack of novelty, obviousness, lack of written description or enablement, and/or double patenting. Similar to an Inter Partes Review (IPR) proceeding, in a PGR proceeding claims in an unexpired patent are given their broadest reasonable interpretation, just as they are during prosecution before the US Patent and Trademark Office (USPTO).

Although PGR proceedings take place before the PTAB at the USPTO, they have some similarities to civil trials. In both IPRs and PGRs the parties can submit testimony in the form of declarations and testimony from depositions and collect evidence.

To institute a PGR proceeding against a subject patent, a petitioner that has not previously filed a civil action challenging the validity of a claim of the subject patent must file a petition within nine months after patent issuance. Similar to an IPR, a PGR petitioner need not meet the standing requirements necessary for filing a declaratory judgment action in civil court, i.e., no requirement that there be an apprehension of suit. Also, IPR and PGR petitioners may not file their petitions anonymously.

In order to secure institution of a PGR, a petitioner must either:

  • show that it is more likely than not that at least one claim of the challenged patent is unpatentable, or
  • raise a novel or unsettled legal question that is important to other patents or applications.

If the petition is granted, the PGR petitioner need only demonstrate the unpatentability of a challenged claim by a “preponderance of the evidence” rather than the “clear and convincing” standard used in civil court. A final determination by the PTAB will generally issue within one year of institution of the PGR (or 18 months from filing).

Although PGRs are used as an alternative to civil litigation, a petitioner should be wary of the estoppel effects of a PGR proceeding on subsequent litigation or other administrative proceedings (e.g., US International Trade Commission or USPTO actions). For example, if the PTAB issues a final written decision regarding the patentability of a claim, the petitioner(s) will be estopped from raising arguments in subsequent litigation or other administrative proceedings that were raised or reasonably could have been raised during the PGR.

PGR offers several benefits for a challenger compared to other proceedings used to invalidate a patent:

  • PGR proceedings take less time than litigation to reach a final disposition—typically 18 months or less.
  • PGR proceedings are a cost-effective alternative to litigation.
  • The challenger’s standard of proof for invalidating a patent is preponderance of the evidence rather than clear and convincing evidence, giving the challenger a greater likelihood of success.
  • In addition to anticipation and obviousness based on printed publication or product prior art, a challenger may assert unpatentability of a patent on the basis of lack of enablement, lack of written description, and lack of patent eligible subject matter (IPR proceedings allow only anticipation and obviousness challenges based on printed publications).