Patent post-grant review (PGR) is a consequential process that allows third parties to challenge the validity of a patent after it has been granted. While PGR offers an opportunity to correct any errors in the issuance of a patent, it can also lead to challenges for both patent holders and those seeking to challenge the patent. Navigating these complications is crucial for anyone involved in the process, whether they are seeking to preserve or contest a patent.
A PGR petition must be filed within nine months of a patent’s issuance. Missing this window can complicate the process for challengers, as they may lose the opportunity to invalidate a patent under PGR. However, after this nine-month period, other options remain available, such as filing for an Inter Partes Review (IPR). Though IPR offers a chance to challenge the patent, it is generally more limited in scope than PGR. For patent holders, understanding this timing is essential for preparing early and identifying any weaknesses that third parties might attempt to exploit.
The burden of proof and other key concerns
In a post-grant review, the burden of proof rests on the challenger to demonstrate that the patent at issue is invalid. The challenger must provide evidence that the patent does not meet the requirements for patentability, such as novelty, non-obviousness or adequate disclosure. If the challenger fails to provide clear and convincing evidence, the patent may remain intact.
Estoppel is another critical issue to consider during PGR. If a challenger initiates a PGR and the patent at issue is upheld, the challenger may be barred from raising the same invalidity arguments in future proceedings, including district court litigation. This estoppel can limit the options for a challenger. Therefore, it is important for challengers to consider all potential invalidity arguments before initiating PGR. Preparing a comprehensive case from the outset is crucial.
Estoppel can provide a significant advantage for patent holders, as it prevents repeated challenges on the same grounds. However, if new grounds for invalidity arise or are not addressed during PGR, the patent may still face future challenges.
Another complication that often arises is when PGR runs parallel to other legal proceedings, such as district court litigation or proceedings before the International Trade Commission (ITC). PGR and other legal actions can proceed simultaneously, potentially complicating legal strategies. Decisions in one forum may influence the outcomes in another, making it crucial for both patent holders and challengers to stay informed about all concurrent proceedings.
Patent post-grant review is a powerful tool for both challenging and defending a patent. Given the potential complications and significant consequences, it is advisable for both patent holders and challengers to seek expert guidance throughout the PGR process.