Post-Grant Patent Proceedings

In 2012, the American Invents Act (AIA) established three new ways to challenge the validity of claims in already issued patents.

 

The Patent Trial and Appeal Board (PTAB), often referred to as the “Board”, was created in 2012 on the first anniversary of the signing of the America Invents Act (AIA). The purpose of the Board is to conduct trials, including inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method patent reviews and derivation proceedings (CBMs).

Inter Partes Review (IPR)

Inter partes review (IPR) was created by the America Invents Act as a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent. Petitioners can challenge a patent on the basis of novelty and obviousness in light of prior art. IPRs provide patent challengers a relatively cheap and expedient avenue to challenge the validity of a patent, especially when compared to litigation. If the Board decides to institute review, a Final Written Decision is normally issued within one year. Historically, IPRs have not been very favorable to patent owners, with at least partial invalidation occurring 81% of the time. Because of the short time frame and historical trends, it is critical that the inter partes reviews authorized by the AIA be handled by attorneys such as Carr & Ferrell's, who are scientific and technical experts, as well as experienced litigators.

Post Grant Review (PGR)

Post grant review (PGR) is similar to inter partes review because it can be used to challenge the patentability of one or more claims in a patent. Unlike inter partes review, however, Petitioners in a PGR proceeding can challenge a patent on a wider variety of bases. Additionally, any PGR petition must be filed within nine months from the date of a patent’s grant. Because of the short time frame, a Petitioner will need a law firm that is well versed in both patent prosecution and litigation to insure a timely filing or response to a petition. At Carr & Ferrell we have one of the nation's leading teams of patent litigation professionals regarding the complexities and nuances of patent law.

Covered Business Method Patent Review (CBM)

Unlike inter partes review and post grant review, covered business method review (CBM) is only available to challenge patents related to financial products or services. Although it is procedurally similar to inter partes review and post-grant review, a petition for CBM review may only be filed by an entity or person who has been sued or otherwise charged with infringing a patent.