overview_prepclass

OVERVIEW:
A PRIMER ON PGRs

POST-GRANT REVIEW

Timing

  • A PGR petition cannot be filed later than 9 months from the date of grant of patent.

Threshold

  • “[T]hat it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”; or
  • there is a “showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”

Scope

  • Petitioner may raise arguments under 35 U.S.C. §§ 101, 102, 103, and 112 (but not best mode).

Applicability

  • Applies to patents subject to the AIA (generally those having an effective filing date on or after March 16, 2013).

Estoppel

  • A petitioner in a PGR may not assert that a claim is invalid on any ground that the petitioner raised or “reasonably could have raised” in the PGR in a subsequent district court or ITC action. In addition, a petitioner may not request or maintain a subsequent proceeding before the PTO with respect to any challenged patent claim on any ground raised or that reasonably could have been raised.
  • A patent owner is estopped from taking actions inconsistent with an adverse judgment, such as obtaining a claim in a patent that is patentably indistinct from a finally-refused or cancelled claim.