U.S. Patent & Trademark Office (USPTO) procedures provide only limited opportunities to challenge a U.S. patent. That, however, may soon change. Last year, lawmakers proposed legislation to add a post-grant review procedure at the USPTO. If adopted into law, this procedure will provide a relatively low-cost, efficient alternative to challenging the validity of U.S. patents.

Although the proposed legislation still awaits a full vote from both lawmaking bodies of Congress, the Senate Judiciary Committee approved a bill including a post-grant review procedure last spring. That bill provides for an administrative proceeding at the USPTO, where anyone other than the patent owner may file a petition to challenge the validity of an issued patent in order to cancel as unpatentable any claim of the patent. Similar to current USPTO reexamination proceedings, the proposed legislation gives the USPTO discretion to institute post-grant review proceedings if the Office finds that the petition raises a substantial new question of patentability for at least one claim in the challenged patent. Unlike reexamination proceedings, however, the proposed post-grant review will allow for challenges on any patentability ground, including anticipation, obviousness, and inadequate written description. Challenges for failure to disclose the best mode of an invention, however, will not be permitted. And for prior art, the proposed procedure will allow for challenges based on prior publications, public uses, sales, and offers for sale. The proposed post-grant review procedure also includes provisions permitting affidavits, declarations, factual evidence, and/or expert opinions, as well as limited discovery. The procedure will require the USPTO to render a final decision, appealable to the Federal Circuit, within one year of initiation. An extension of six months is available upon a showing of good cause.

The proposed procedure provides some protections to patent owners. For example, the procedure, as currently proposed, limits each petitioner to one petition. It also bars a petitioner from raising in a later civil action any invalidity ground raised in the post-grant review. The proposal also requires challenges against a U.S. patent to be brought within twelve months of the patent’s issue date. In addition, the proposed procedure allows the patent owner to amend the patent claims so long as claim scope is not enlarged.

Regardless of its benefits (or detriments), the proposed procedure will provide an alternative to USPTO reexamination or district court validity challenges. While legal and business considerations will often dictate the best approach for a particular circumstance, the proposed procedure offers significant incentives to a party facing a patent infringement suit immediately after patent issuance. In addition to providing a faster and lower-cost resolution, it provides three other important advantages. First, it involves a lower standard of proof compared to court actions—a preponderance of the evidence as opposed to the heightened clear and convincing evidence standard applied in court. Second, the presumption of validity that applies at court does not attach to a patent undergoing post-grant review. Third, the proposed procedure will require the USPTO to give challenged claims their broadest, reasonable construction, which will effectively widen the universe of applicable prior art.

For a party facing imminent litigation, these advantages may present a strategic benefit, but not without a host of additional considerations on the timing and content of the challenge. For example, waiting to file towards the end of the twelve-month filing window may allow a party to avoid the estoppel provisions of the post-grant review procedure. Because other parties may also file petitions, waiting would allow a party to assess the likelihood of patent cancellation without any involvement, thus preserving its ability to pursue a reexamination or civil action in the future. Waiting, however, is not without risk because the USPTO can stay a post-grant review proceeding pending completion of a civil action addressing the same or substantially the same questions of patentability. A waiting party, therefore, may lose its opportunity to initiate post-grant review if the patent owner initiates a civil action against it first. In addition to timing, a petitioner must decide whether to raise all or only some grounds of invalidity in the petition. Since the estoppel provisions only apply to grounds raised by a party, not to grounds the party could have raised, a petitioner may want to include only a few grounds of invalidity in the petition, preserving perhaps stronger validity challenges for a later civil action.

The proposed post-grant review procedure, if implemented, should provide a faster, cost-effective mechanism for challenging issued U.S. patents. Whether to challenge a patent via this new procedure, however, will depend on many considerations that must be closely tailored to the particulars at hand. Unfortunately, like many areas of patent practice, there is no one-size-fits-all approach to the proposed post-grant review procedures. Rather, each situation will require a careful and independent review of the relevant legal and business considerations.