Review proceedings are brought before the Patent Trial and Appeal Board Third parties once a patent has been granted. There are three types of review proceedings available namely
- Inter Partes Review (IPR)
- Post-Grant Review(PGR)
- Covered Business Method Review (CBM) / Post-Grant validity of business method patents
Inter Partes Review (IPR)
Petition for inter partes review is brought about by a third party or the Plaintiff challenging the validity of the patent and must be based on a printed publication or patent. The Patent Trial & Appeal Board (PTAB) determines whether petition establishes a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. If the petition is granted, the trial is instituted in front of the PTAB. This program is only available for the pre-AIA patent applications.
PTO will not analyze an original claim relative to 35 U.S.C.§101 or§112, i.e. it will not analyze the claim based on the allowable subject matter or whether the specification requirements as per law have been met. Rather it will only analyze an original claim relative to 35 U.S.C.§102 or§103.
The Patent holder may seek to narrow a claim or to maintain a claim as is, but a claim cannot be broadened. Once all the available processes with the patent office has been exhausted the patent cannot be further challenged by the identified real party in interest is estopped from challenging the patent.
Post-Grant Review (PGR)
Filing a post grant review is based on any ground that can be is available as a defense in an infringement suit and is only available for patents with a priority date after the AIA has taken effect. The said review can be petitioned within 9 months of issue. The Appellate board will only institute a review if the petition shows that that at least one of the claims challenged is unpatentable.
The Post-grant review proceedings are meant to have a higher initiation threshold as compared to the Inter partes review proceedings and are required to have a novel or legal question which is unsettled by the courts and also that which is important to the other patents or patent applications. There is no stay of litigation, pending a PGR, if the Patent holder brings suit within 3 months of the grant, & the Patent holder moves for the preliminary injunction. In addition to novelty and obviousness challenges, the PGR allows Eligibility challenges under § 101 along with Indefiniteness challenges and Written description and enablement challenges.
The estoppel is the same as that which is applicable to the Inter partes review. A pertinent point in practice is that a Post-grant review is particularly useful in the life sciences, which involve challenges regarding the § 112 requirements more frequently than in the predictable arts.
In contrast, the European Post-grant Opposition allows for such opposition similar to the PGR only on formal grounds and any third party can initiate the proceedings. . Prosecution history estoppel is the prosecution of the patent is not binding on the opposition procedures, whereas, in the US, the statements made during prosecution impact the review proceedings and litigation. The right to amend the claims in a Post-grant review is strictly limited and does not allow the broadening of the claims. However, the EPO is liberal with the claim amendments though broadening of claims is not allowable there as well. Though parallel litigation proceeds are possible in both jurisdictions, No legal estoppel prevails on the opposing party in the EPO. Whereas in the US, Petitioner is stopped in court and PTO regarding the challenges made or those that reasonably could have been made. Though the opposition proceedings with the EPO might take slightly longer as compared to the PGR proceedings with the PTAB, they are also substantial cost-effective.
Post-grant review in case of Covered Business Method (CBM) patents
The Post grant review of a CBM is available only when an infringement suit is impending and in that case, either the Plaintiff or the Defendant of the said suit may institute a review of the said CBM. .CBM is available since 9/16/12 until 9/16/20. And for all pre-AIA CBM patents. It is not available for post-AIA CBM patents when PGR available.
The petitioner must not be estopped by prior review and the petitioner must have a standing. It is also unavailable if the petitioner has already validity of the patent before filing the petition in another forum
Estoppel from CBM is more limited than from PGR or IPR. CBM estoppel affecting a court action extends only to arguments actually raised (not those that “reasonably could have [been] raised”). CBM estoppel affecting PTO proceedings is the same as with PGR. Stays pending CBM are more likely than that for PGR or IPR.
All of the above review proceedings allows requires the petition which will be drafted which challenges the patentability in one way or the other. Claim charts accompanying unpatentability arguments and technical analysis of the prior art would constitute a substantive portion of the petition. Given that these patents have already been scrutinized once by the patent office while initiating any of these review proceedings the technical analysis needs to be sharp and to the point. That is what will determine whether a trial is going to take place or not.
We at OutsourceIP fully understand the requirements of such proceeding including the practice nitty gritty are able to support you in preparation of these petitions. From performing validity searches to writing/drafting the petitions with the required argumentation on novelty or inventive step, or on simply the technical features of the invention to proof reading claims, mapping the claims, amending the patent application, etc., the Attorneys and technical specialists here at OutsourceIP provide the entire ambit of services.