The Leahy-Smith America Invents Act introduced post-grant review proceedings before the U.S. Patent Trial and Appeal Board and the United States Patent and Trademark Office. As a result, two new types of proceedings were introduced: post-grant review (PGR) and inter parties review. (IPR).
PGR is available for patents issued from applications having an effective filing date on or after March 16, 2013. A PGR must be filed within nine months after the date of the grant of the patent or of the issuance of a reissue patent. The grounds that can be raised in a PGR are broad and include: ineligible subjection matter (§101), written description, enablement and indefiniteness (but not best mode; §112), novelty (§102) and obviousness (§103).
In contrast, an IPR can be filed on any issued patent regardless of its filing date. The timing for filing an IPR is:
- For patents issued under the first-to-invent system (namely, filed prior to March 16, 2013), at any time;
- For patents issued under the first-to-file system (namely on or after March 16, 2013), after the later of either:
- A date that is nine months after the grant of a patent; or
- If a post-grant review is instituted, the date of the termination of such post-grant review
The grounds that can be raised in an IPR are limited to lack of novelty and obviousness and only on the basis of prior art consisting of patents or printed publications.
We at the BRIC Wall thought it would be informative to compare and examine the administrative processes available at various patent offices to dispute or challenge the patentability or validity of a patent application. Specifically, in an upcoming series of posts, we will review post-grant review proceedings, oppositions and third party observations in the U.S., but also in Australia, Brazil, China, Europe, Japan, India, Russia.