Post-Grant Review (“PGR”) is a trial proceeding conducted at the Patent Trial and Appeal Board (“PTAB”) to review the patentability (validity) of one or more claims in an issued patent.  Essentially, a PGR is a Patent Office trial on whether a patent is valid, and we employ our flexible and agile litigation approach to these proceedings as well.

What is a PGR?

PGR proceedings are relatively new, and are available to challenge the validity of a claim based on lack of novelty or non-obviousness, insufficient written description, lack of enablement, indefiniteness or ineligible subject matter, but only within the first nine months after issuance of the patent.  A PGR begins with third party challenger (a person who is not the owner of the patent) filing a petition, which sets forth all of the claims the challenger contends are invalid, the specific bases for the challenger’s contentions and all supporting evidence.  The patent owner may file a preliminary response to the petition. 

A PGR may be instituted upon a showing that it is more likely than not that a claim will be deemed unpatentable.  Once instituted, the parties may take discovery, typically from at least experts and inventors, to support their cases prior to oral arguments before the PTAB. 

How much does a PGR cost?

The government fees associated with a PGR are as follows:

  • $16,000 - PGR request fee (up to 20 claims);
  • $22,000 - PGR post-institution fee (up to 15 claims);
  • $375/claim - PGR request fee for each claim over 20; and
  • $825/claim – PGR post-institution fee for each claim over 15.

Potential Advantages over Federal Court Litigation

A PGR can offer advantages over challenging a patent in Federal court.  Most notably, in a PRG proceeding, the challenged patent is not presumed valid and the claim terms are given their broadest reasonable interpretation, unlike in a Federal court validity dispute.  Discovery in a PGR also tends to be much more limited in scope than in Federal court litigation, resulting in significant cost savings.  There is, however, one significant potential disadvantage for patent challengers who pursue a PGR— in any later Patent Office proceeding, ITC proceeding, or Federal Court proceeding, the patent challenger in a PGR will be estopped from asserting any ground that it raised or reasonably could have raised in the earlier PGR. 

Comparison to Inter Partes Review

A PGR is similar to an Inter Partes Review (“IPR”), with a few notable differences:

  • A PGR is limited to challenging patents filed on or after March 16, 2013, while any patent may be challenged in an IPR;
  • A PGR is limited to challenging patents only within the first nine months after their issuance, while an IPR is available for challenging patents after this initial window; and
  • A PGR is not limited to novelty and non-obviousness challenges, and it may be based on prior art other than patents and printed publications.

If someone has challenged your patent in a PGR proceeding, of if you would like to explore the possibility of challenging the validity of another’s patent (either in Federal court or before the PTAB), we can help find the solution that is best for you. 

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