Knobbe/Martens: Intellectual Property Law

Post-Grant Review

Under changes to U.S. patent law as part of the America Invents Act (AIA), patents can now be challenged by requesting a Post Grant Review (PGR).

What is considered during a PGR?

A PGR challenger may try to show that the government should not have granted the patent in question based on the ground that:

  • One or more claims are not “novel” under 35 U.S.C. § 102;
  • One or more claims are “obvious” under 35 U.S.C. § 103;
  • One or more claims are not supported by sufficient “written description” under 35 U.S.C. § 112;
  • One or more claims are not “enabled” by the detailed description under 35 U.S.C. § 112; or
  • One or more claims are improper as “indefinite” under 35 U.S.C. § 112. 

These and other issues are brought before a group of judges on the Patent Trial and Appeal Board (PTAB). Many of these judges have previous experience deciding interferences, where parties contest the true inventor of a technology.

Are all patents possibly subject to a PGR?

No. A PGR can only challenge patents filed after March 16, 2013. In a manner somewhat similar to the European Patent Office “Opposition” proceedings, a PGR request must be filed within 9-months after the challenged patent is issued. 

What are the government fees associated with a PGR?

The government fees are:

  • $12,000 - PGR request fee (up to 20 claims);
  • $18,000 - PGR post-institution fee (up to 15 claims);
  • $250/claim - PGR request fee for each claim over 20; and
  • $550/claim – PGR post-institution fee for each claim over 15. 

 

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