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Post-Grant Review Proceedings

The new United States patent law (AIA) includes several post grant procedures for affecting the patent. This paper will address post grant review (PGR), often previously referred to as opposition.

Any third party may request post grant review within nine months after grant. Such a request may be based on any ground of invalidity including prior art, insufficiency of disclosure, or eligibility for patent protection, among others. A PGR proceeding will be instituted if the requester is able to show that it is more likely than not that at least one of the claims challenged is unpatentable.

The proceeding will take place before a three-judge panel of the Patent Trial and Appeal Board (PTAB), will include limited discovery, both the patentee and the requester will be involved, and it is directed by statute to be completed within one year, which may be extended by the Director (of the USPTO) up to six months for good cause shown.

Any issue raised or that could have been raised in the PGR proceeding is barred from use in court or in any other USPTO proceedings involving the same parties and the same patent (estoppel). A PGR proceeding can be stopped by settlement, and estoppel would not then apply.

This procedure, under the currently proposed fee schedule by the USPTO, will require payment of about $30,000 by the requester upon filing. This fee schedule is subject to revisions.

Note: PGR applies only to patents issuing under the new first-inventor-to-file rules, which commence on 16 March 2013. Thus, the first PGR cases will not likely be instituted until at least 2015.

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