Post Grant Review

Post Grant Review (PGR) is available for patents with a priority date no earlier than March 16, 2013 and can only be requested within nine months of patent issuance. PGR differs from reexamination and Inter Partes Review procedures in that PGR allows for consideration of a wider range of bases that might render the patent invalid. This includes, for example, failure to comply with the statutory prerequisites of 35 USC §112. A party that requests PGR may participate throughout the review process but is estopped from raising in a later proceeding any basis for invalidation that it raised or reasonably could have raised in the PGR. Likewise, related litigation involving the same parties and the same patent may impose limitations on when PGR may be requested and what issues may be submitted for PGR.

Unlike Ex Parte and Inter Partes Reexamination, in which specially qualified examiners handle the reexamination, a Post Grant Review is conducted and decided by a tribunal of Administrative Patent Judges. PGR also differs from reexamination procedures in that limited discovery is available in PGR to locate or dispute evidence to be considered. For a comparison of these and other differences and similarities in PGR as compared to the various reexamination and review procedures, see Ex Parte/Inter Partes/Post Grant Comparison.

In August 2012, the PTO issued new rules governing the new post grant procedures established by the AIA. For more on these procedures and rules, see Final AIA Rules for Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents. Note, however, that because of the limitations as to the patents subject to PGR and as to the time when PGR may be requested, the inception of PGR practice will likely be postponed until at least 2014.