Unlike a Third-Party Pre-Issuance Submission, a Post Grant Review (PGR) may be instituted within a nine-month window after a patent is granted.  A PGR is conducted by the Patent Trial and Appeal Board (PTAB) and can be requested based on any ground related to patent invalidity under 35 U.S.C § 282 aside from the best mode requirement.  When requesting a PGR, a petition must identify all real parties in interest, each claim challenged, the grounds on which the challenges are based, and the supporting evidence for each challenge to each claim.  After the petition is filed, the patent owner has an opportunity to submit arguments against the institution of the PGR.  The Director then has three months to decide if it is “more likely than not that at least one of the claims challenged in the petition is unpatentable,” which is the standard for instituting a PGR.  Another way to meet this threshold is to persuade the Director that the request for a PGR raises a novel or unsettled legal question that is important to other patents or patent applications.

Discovery is allowed in a PGR but is limited to evidence directly related to factual assertions advanced by either party in the proceeding.  During the proceedings, the patent owner is allowed to file one motion to amend the challenged patent claims.  Any amendments may cancel any challenged claim and/or propose a reasonable number of substitute claims.  Ultimately, it is up to the petitioner to prove unpatentability by a preponderance of the evidence. The preponderance of the evidence standard in PGRs can be beneficial to the petitioner because it is a lower burden of proof than the clear and convincing evidence standard used during litigation.  The statutory deadline for completing a PGR is 12 months but can be extended for up to an additional six months for good cause.

The final decision rendered by the Board is appealable to the Federal Circuit, however, the decision to institute the PGR in the first place is not.  The Patent Office fee for requesting a PGR is $12,000 plus a fee of $250 for each challenged claim over 20.

One drawback to a PGR can come in the form of estoppel.  Estoppel in a PGR is based on any ground raised or which reasonably could have been raised under 35 U.S.C. § 282 and applies to all USPTO proceedings, ITC proceedings, and district court litigations.  Therefore, the effect is incredibly broad and may even prevent a third-party from raising several significant defenses in litigation.  Furthermore, estoppel attaches as soon as a final written decision is rendered by the Board.  However, because settlement is allowed between parties to PGRs, estoppel can be avoided if a settlement is reached.  It should also be noted that PGRs can depend on other proceedings.  For example, if a PGR petitioner has filed a civil action challenging the validity of the claim prior to filing the PGR, the PGR cannot be granted.  Alternatively, if a PGR is requested first or in conjunction with a civil action, the civil action is automatically stayed.



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