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Post Grant Review and Inter Partes Review At a Glance

September 21, 2018
Post by R. Scott Johnson

Patent Office reviews known as a Post Grant Review (PGR) or Inter Partes Review (IPR) of issued patents are constitutional, Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1370 (2018), likely to avoid some sovereign immunity challenge, Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322 (Fed. Cir. 2018), and must thoroughly address every claim under review, SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1352–53 (2018). In short, they’re here to stay. Almost anyone can institute these proceedings, but only someone with an injury in fact can appeal to the Federal Circuit Court of Appeals. JTEKT Corp. v. GKN Auto. LTD., No. 2017-1828, 2018 WL 3673005, at *2 (Fed. Cir. Aug. 3, 2018). So how will they affect your patent strategy? Each offers the benefit of a lower standard of review than a district court proceeding. Each can potentially save time and expedite a decision versus a district court proceeding. Each is generally less expensive than a full-blown patent infringement action. And each could impact your business strategy in different ways. 

PGRs must be filed within nine months from the date a patent[1] issues. This means that in order for any challenge to be placed, you must be actively monitoring competitor owned patents or, preferably competitor owned patent applications. You must monitor these patents or applications to know which ones have potential claim scope that may cause you concern. That concern can arise from a potential to cover your existing products that came to market after the competitor’s invention or products you intend to bring to market. 

If you find a patent or an application of concern, you must be prepared to evaluate the patent’s validity quickly to timely file a PGR. Thankfully, there are several grounds on which you can challenge the patent. These include whether it meets the requirements of section 101 (usefulness and statutory subject matter issues), section 112 (written description), section 102 (novelty or prior public use), or section 103 (obviousness). If instituted, a PGR is typically decided within 12 months. This is often much shorter than the time to judgment in a litigation, but check your jurisdiction’s typical litigation timeline.      

If you do not challenge the patent within the first nine months, you can still challenge a patent through an inter partes review. An IPR is similar to a PGR except your validity challenges are more limited. In an IPR, you can only challenge a patent based on section 102 (novelty) or 103 (obviousness) grounds. Similar to a PGR, decisions are generally expedited, this time by statute. IPRs must be decided generally within 18 months (extendable to 24 for good cause). An IPR is strongly recommended if you are facing a patent threat to your business – i.e. you may be about to be sued and you have a strong invalidity position based on prior art.

Both of these proceedings offer potential benefits to an accused infringer. If instituted, both have high success rates, but both also have potential consequences if unsuccessful. Be sure to consider PGRs and IPRs as part of any patent strategy.

[1] PGRs can only be filed for patents with an effective filing date of March 16, 2013 or later.

Scott Johnson is Chair of the Litigation practice group and a member of the Mechanical practice group at McKee, Voorhees & Sease. Scott has been protecting his client's intellectual property rights at MVS for 20 years.

 


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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