The America Invents Act (AIA) has changed the landscape for post-grant review proceedings. Although ex parte re-examination remains as an option to challenge the validity of an already-issued patent, the AIA replaced inter partes re-examination with two new procedures. The first, post-grant review (PGR), offers a “first window” to challenge a patent during the first nine months after the patent’s issuance. The second, inter partes review (IPR), offers a “second window” to challenge a patent after the nine-month post-grant review period ends.

This article provides an overview of some of the primary differences and similarities between PGR and IPR.

Post-Grant Review

PGR is available for patents issued from applications that have an effective filing date on or after March 16, 2013. Further, PGR must be requested within nine months of the issue date of the patent. Any person who is not the owner of the patent at issue may commence a PGR proceeding. 35 U.S.C. § 321.

The grounds that can be raised in a PGR are broad. Challenges in a PGR can be based on any ground for invalidity that is permitted in litigation (except for failure to comply with best mode requirement). See 35 U.S.C. § 321(b). These grounds include 35 U.S.C. §§ 101, 102, 103, and 112.

A petition for a PGR must demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 35 U.S.C. § 324(a). Alternatively, a PGR may be granted if the petition “raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C. § 324(b).

Inter Partes Review

To file an application for IPR, an applicant must wait until after the later of either nine months after the issue date of the patent or the date of the termination of the PGR if a PGR was commenced. Unlike PGR, the grounds for IPR are limited to lack of novelty under § 102 and obviousness under § 103 and only on the basis of prior art consisting of patents or printed publications. See 35 U.S.C. § 311.

The threshold for determining whether to institute an IPR is “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 312. As with PGR, an IPR can be commenced by any person who is not the owner of the patent at issue. 35 U.S.C. § 311(a).

Post-Grant Review vs. Inter Partes Review

Both PGR and IPR present new ways to challenge an issued patent. The chart below highlights some of the key differences and similarities between these two review proceedings:

Click here to view table.

Unless a PGR or IPR is settled or dismissed, the Patent Trial and Appeals Board (PTAB) will issue a full written decision and certificate at the conclusion of the proceeding that will either cancel or affirm the existing claim(s) and incorporate any new or modified claims that were adopted during the proceedings. 35 U.S.C. §§ 318(a)-(b) and 328(a)-(b).

Notably, both PGR and IPR have statutory deadlines for completion. Specifically, the proceedings must conclude within one year. 35 U.S.C. §§ 316(a)(11) and 326(a)(11) (stating that the agency may extend the time for an additional six months on a showing of good cause). This short and definite time period should make it more likely that a district court judge would grant a motion for a stay of litigation pending completion of the review proceeding.

Furthermore, the estoppel provisions for PGR and IPR both prevent re-litigation with respect to any ground that the petitioner raised or reasonably could have raised. 35 U.S.C. §§ 315(e) and 325(e). However, since PGR has broader grounds available to a petition than IPR, the estoppel implications are likely to be greater for a petitioner in a PGR. Ultimately, a party dissatisfied with the final written decision of the PTAB may appeal the decision to the Federal Circuit. 35 U.S.C. § 319.

Strategic Implications

Both PGR and IPR will have numerous strategic implications for patent litigation. For example, the statutory requirement that a PGR and IPR be completed within one year could provide advantages for challengers seeking a prompt resolution of validity issues. In addition, there are major differences in the manner in which claims are interpreted by the PTO and the courts. During a review proceeding, claims will likely be subjected to the broadest reasonable interpretation by the PTAB. See, e.g., In re NTP, Inc. 654 F.3d 1279, 1287 (Fed. Cir. 2011). In litigation, however, claim construction is less predictable and sometimes narrower, which makes it more difficult to prove invalidity, but could be helpful for avoiding an infringement charge. Moreover, unlike the PTO, there is presumption of patent validity in litigation, which can only be rebutted by clear and convincing evidence. 35 U.S.C. § 282.

Thus, PGR and IPR could offer some benefits over litigation in terms of quicker results, lower costs, and lower burden of proof depending on the circumstances of the dispute.