Inter partes review is akin to inter partes reexamination in that it is limited to prior art grounds based on patents and printed publications, whereas post-grant review can be based on any grounds that are available for an invalidity defense.
In what way might a post grant review be an alternative to litigation?
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, including due to the much more limited discovery that is available during PGR proceedings.
What patents are eligible for PGR?
A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA.
What is a post grant review?
Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). The patent owner may file a preliminary response to the petition.
What is a basis for post grant review?
Timing and patent eligibility aside, there are several significant differences between post-grant review and conventional inter partes reexamination. Perhaps most notable are the available grounds of rejection.
Who can file a post grant review?
Any party that is not an owner of the patent and that has not filed a civil action challenging the validity of the patent may file a petition for post-grant review. In contrast to reexamination practice, a petition for PGR can be based on any patentability grounds, including non-patentable subject matter (35 U.S.C.
What is post grant review?
Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3).
What is an ex parte review?
What Is Ex Parte Reexamination? Ex parte reexamination is a tool that allows a patent owner or a third party to lodge a request for the United States Patent Office (USPTO) to reexamine an already-granted patent based on other patents and publications that they bring to the USPTO’s attention.
When can you file a PGR?
nine months
PGR can be filed immediately after patent issuance or reissuance, and IPR can only be filed after the period for post-grant review has passed or if no PGR is filed then nine months from the date the patent is issued (or reissued).
How do I post a grant review?
To begin proceedings on a post grant review, you must file a challenge within nine months of a patent’s issuance or reissuance. You need to show that at least one challenged claim is unpatentable or that the there is a new or unsettled legal question that affects other patents or patent applications.
When can a PGR be filed?
