PGR Window Anomaly to Encourage Early Litigation?
Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA). Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.
As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).
When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR, becomes available for all patents next September 16, 2012.
So, for newly issued patents that will not be eligible for PGR over the next few years, do requesters still have to wait 9 months before filing a request for IPR? To answer that question, one has to review the language of § 311(c).
(c) Filing Deadline- A petition for inter partes review shall be filed after the later of either–
(1) the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or
(2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.
As can be appreciated, the statute makes no exception to the 9 month window for patents based on their eligibility for PGR. Perhaps some basis may exist in the legislative history for excluding such, but it seems very unlikely that the rules for implementing IPR will stray that far from the clear language of the statute.
Going forward, this creates a troubling dilemma for third parties faced with an infringement action that includes a newly issued patent that is not eligible for PGR. While on the one hand, the statutes mandate that IPR must be pursued within 12 months of service of a complaint, 9 months of that time is effectively unavailable for any inter partes challenge (IPR or PGR). For those defendants sued in courts with a particularly swift dockets, waiting 9 months may destroy any opportunity to stay the case pending USPTO proceedings. Certainly, a third party may still resort to ex parte reexamination (EXP), but that option is much less attractive for third party requesters based on historical results. Likewise, a later IPR may be denied if the issues presented in an earlier EXP are substantially similar to those presented in the later IPR request.
Patentees that obtain patents after September 16, 2012, that fall under the old first to invent scheme, seem best served taking advantage of this inter partes dead zone by suing immediately.