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.
