11/13/2011
by: Joseph Page
Topic Views: 355

Patentability Review After Patent Grants

A second look at patentability is now available

Post Grant Review

 

Review of Granted Patents

The new America Invents Act in the United States patent office provides mechanisms for post-grant review of U.S. patents. While longstanding patent procedure included patent re-examination, patent re-examination is distinct from the new Post Grant Review process for several reasons. Primary among them is that the new process supports a second look at a patent for reasons other than the state of the prior art and questions under 35 USC §§ 102 or 103. These provisions comprise Section 6(d) of the law.

Post-grant review provisions (will be codified at 35 U.S.C. §§ 321-329) are brought by petition to the Director of the USPTO by any person who is not the patent owner. Post-grant review can be based on allegations that at least one claim is invalid under any of the provisions of 35 U.S.C. § 282(b). Post-grant review must be instantiated within 9 months of the patent grant (or issuance of a reissue patent).

Unlike re-examination, post-grant review petitions cannot be filed anonymously. Post-grant review requires identification of all real parties in interest. The petition must be accompanied by copies of all patents or printed publications and any affidavits containing supporting evidence or opinion, and "any other information that the Director may require by regulation". The petition and all supporting evidence must be supplied to the patent owner or a designated representative. As with other proceedings concerning granted patents, post-grant review is public and made available "[a]s soon as practicable after receipt of a petition" for review.

A patentee who is subject to post-grant review has the option of responding to the petition within a prescribed time period. Such response is to be solely aimed at providing reasons why the psot grant petition fails to meet the requirements for its grant. Petitions must put forth evidence that if unrebutted would make it "more likely than not" that at least one of the challenged claims is unpatentable. Alternatively, a grantable petition may contain a showing that there is a "novel or unsettled legal question that is important to other patents or patent applications. The Director must make the determination to institute post-grant review within three months after receiving the patentee's response or when the time for that response has expired, by notifying the petitioner and the patentee and the public, wherein the notice contains the date on which the review will commence. As with current reexamination proceedings, the Director's decision regarding whether to institute post-grant review cannot be appealed and is final.

There are additional limits to when post-grant review petitions can be filed. The bill prohibits a petitioner from having filed a "civil action challenging the validity of a claim of the patent". In addition, if the petitioner files a civil action challenging the validity of a claim of the patent "on or after the date on which the petitioner files a petition for post-grant review," the district court is compelled to issue a stay ("automatically") unless or until the patent owner moves that the stay be lifted, the patent owner files a lawsuit or counterclaim alleging infringement, or the petitioner moves that the civil action be dismissed. If a patent infringement suit is brought within three months of the patent grant date, a district court cannot stay its consideration of a motion for preliminary injunction based on the filing (by anyone) of a post-grant review petition, but there is nothing in the statute to prevent the court from considering the petition when assessing the likelihood of success on the merits prong of the preliminary injunction standard.

 

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