Inventors Must Understand New Post Grant Review Process, Says Brooks Acordia Patent Attorney

Law Firm Newswire



Los Angeles, CA (Law Firm Newswire) October 29, 2013 – “Post grant review” is a patent procedure created under the America Invents Act (AIA) of 2011.

A post grant review is a process by which a person challenges one or more claims of an issued patent as being unpatentable. Together with inter-partes review, post grant reviews replace the pre-AIA claim challenge process known as inter-partes re-examination.

“It is very important for our clients to understand what a post grant review entails, how to avoid it, and how to respond to it,” said Simi Valley patent lawyer Jim Dawson. “Any patent, no matter how carefully the application was prepared, could be petitioned for a post grant review.”

A post grant review may be requested at any time during the nine months following the patent’s issuance by anyone who has not previously challenged the patent’s validity at the United States Patent and Trademark Office (USPTO), Dawson explained. The petitioner may challenge one or more claims of a patent on the grounds of subject matter ineligibility, novelty, obviousness, enablement, indefiniteness, or incorrect or insufficient specification. Failure to disclose best mode is no longer sufficient to challenge a patent claim.

Following the filing of a petition, the patent owner has three months to file a preliminary response as to why a post grant review should not be instituted. A post grant review will be instituted if the petitioner demonstrates that it is more likely than not that one or more claims challenged is unpatentable. If a review is instituted, the patent owner may file one motion to amend the challenged patent claims. Amendments may cancel challenged claims and/or propose substitute claims. The law requires post grant reviews to be completed within one year of institution. That deadline may be extended by up to six months with good cause.

Business method patents, irrespective of their priority date, were subject to post-grant review beginning on September 16, 2012. All other types of patents are subject to post-grant review only if they have a priority date of March 16, 2013, or later, and are thus subject to the first-to-file provisions of the AIA.

Fees for post grant reviews are divided into “petition fees” and “post-institution fees.” Both are due up front upon filing a petition, but post-institution fees are refunded in the event the petition is denied. The petition fee for a post grant review is $12,000 plus $250 for each claim challenged in excess of 20. The post-institution fee is $18,000 plus $550 for each claim in excess of 15.

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