The America Invents Act (AIA) introduces several new procedures for challenging the validity of an issued patent before the US Patent and Trademark Office (USPTO), with the intention of reducing the time and expense associated with litigation. The post-grant review procedure of 35 USC §§321-329 can be used by any party—except the patent owner and anyone who has already filed a civil action—to challenge the validity of at least one claim of a recently issued patent.

With the exception of business-method patents, post-grant review will only be available to challenge patents that are issued with an effective filing date of March 16, 2013, or later, and must be filed within nine months of patent issuance. With limited exceptions, a decision will issue within one year of the institution of proceedings.

Post-grant reviews will be heard by the administrative patent judges (APJs) of the USPTO’s US Patent Trial & Appeal Board (PTAB). Direct expert testimony may be presented only in writing and live cross-examination is available to the opposing party. Limited discovery of documents, including e-mail, is also available. A patent can be challenged under most all grounds available in court.

Practical Considerations

To fully avail itself of post-grant review, a company is well advised to develop a strategy for monitoring the USPTO issued-patent database to identify newly issued patents that might warrant post-grant reviews. Such monitoring could be based on technology, patent classification or simply on the identity of a competitor. Once newly issued patents of interest have been initially identified, collaboration with various business units, technical staff, and litigation counsel will be required to determine which patents warrant challenge and, particularly, which claims should be challenged.

Costs: Since post-grant review is akin to litigation, the USPTO has estimated the personnel time it will have involved in a post-grant review and has set fees accordingly. Given the cost of petitioning for post-grant reviews, it probably will not be feasible for a company to challenge every patent of interest; the internal company review process should focus on patents that could significantly and negatively impact the company’s business. The fees, payable to the USPTO, are as follows:

  • $35,800 to challenge one to 20 claims
  • $800 for each claim in excess of 20 claims

Risks: Once a company embarks on a post-grant review for a specific patent, other litigation options will be constrained as the challenger will be precluded from raising defenses in litigation that were raised or reasonably could have been raised in the post-grant review. Further, receiving a final decision on a post-grant review is slated to only take a year. Therefore, companies that choose to pursue such a review will want to initially consider their strategy so as to manage the compressed timeframe.

On the positive side, a successful post-grant review challenge requires a lower burden of proof of invalidity than is required in the district courts. Petitioners need only show by a "preponderance of the evidence" that a claim is invalid, rather than by "clear and convincing” proof. Also, a post-grant review proceeding permits many different types of challenges, not just those based on prior art.

Once the PTAB issues its final written decision, it should be noted that the petitioner will be limited in its ability to pursue further action through a USPTO proceeding, at the US Court of Appeals for the Federal Circuit, or in a proceeding before the US International Trade Commission under section 337. While these venues remain open to challengers following a post-grant review decision, the petitioner cannot assert that a patent claim is invalid on any ground that was raised or reasonably could have been raised during the post-grant review.

Eligibility for a Post-Grant Review

A post-grant review can be used to challenge any aspect of a patent relating to invalidity as specified under 35 USC §§101, 102, 103 and 112, including failure to comply with enablement or written description requirements, or failure to comply with reissue requirements. A challenger must petition the USPTO for post-grant review of particular patent claims within nine months of the patent’s issuance. If the petitioner (or real party in interest) has already filed a civil action challenging validity, it may not initiate post-grant review.

To initiate the post-grant review, the petitioner must demonstrate that it is “more likely than not” that at least one claim of a patent is invalid or must show that the petition raises a novel or unsettled legal question that is important to other patents and applications. The petition itself must identify each claim challenged, the grounds on which the challenge is based and the evidence that supports the grounds, such as patents, printed publications, declarations or affidavits, and opinions. It also must identify all real parties in interest.

Responding to a Post-Grant Review Challenge

Any company that applies for numerous patents may eventually face post-grant review challenges. Early in the process, a company defending post-grant review may be well advised to analyze the submitter: Is it a target for licensing? An infringer, or potential infringer, of related patents? Or does the submitter own recently issued patents that warrant investigation?

While it may indeed be worthwhile to fight against such a challenge, defeating it will require time and resources. A successful effort will preclude the petitioner from presenting in a subsequent district court action any invalidity defenses that were or reasonably could have been brought up in the post-grant review proceeding. In defending the patent, the patent-holder will have the opportunity to amend the patent claims with a one-time motion to narrow its claims. Alternatively, the patent-holder can cancel the challenged claim(s) and propose a reasonable number of substitute, non-broadening claims.

If you have any questions or wish to discuss how various aspects of the AIA legislation may affect your organization, please contact your attorney at Brinks Hofer Gilson & Lione.