Post Grant Proceedings

In today’s intellectual property landscape, the granting of a patent is not the final say on patentability.  Patents can be, and often are, challenged after they are awarded, typically as a parallel proceeding to a patent infringement litigation. Two post-grant review proceedings introduced by the America Invents Act of 2011 – post-grant review (PGR) and inter partes review (IPR) – offer mechanisms for challenging awarded patents at the US Patent and Trademark Office (USPTO).

Post-grant proceedings are high-stakes legal challenges that can make or break a company’s IP portfolio or completely alter litigation outcomes, making it vital to have experienced post-grant attorneys on your side.  Panitch Schwarze’s skilled, knowledgeable post-grant attorneys represent both petitioners and patent owners in proceedings before the Patent Trial and Appeal Board (PTAB). These proceedings are typically related to a co-pending district court litigation. So, it is important to have consistent post-grant and litigation strategies. Whether Panitch Schwarze is also handling your related litigation or is partnering with your litigation counsel, Panitch Schwarze’s attorneys ensure that your post-grant proceeding strategies are optimized, cost-efficient, and aligned with your overall intellectual property goals. 

Our Philadelphia and Wilmington, Delaware, IP law firm excels at identifying methods for achieving successful resolutions and creating innovative ideas to manage long-term patent strategies. Our post-grant attorneys have successfully represented clients in inter partes reviews through trial and written decision, and often present on post-grant review proceedings. Recent presentations include:

• Pandemic Pandemonium: PTAB Proceedings and Patent Preparedness at Center Force
• PTO Rulemaking and Changes to IPRs/PGRs at the Federal Circuit Bar Association
• Inter Partes Reviews & Post Grant Proceedings: Best Strategies for Winning at The Knowledge Group
• Paragraph IV Litigation, IPRs, and New Settlement Risks at Strafford 

Post-Grant Proceedings Change U.S. IP Landscape

The America Invents Act made the most sweeping changes to the U.S. patent system in more than 50 years. Post-grant review and inter partes review replaced inter partes reexamination as the primary tool for effective third-party validity contests at the US Patent Office, and offer third parties relatively quick and inexpensive alternatives to challenging a patent through litigation.

PGR is used to challenge the validity of a patent (having an earliest effective filing date on or after March 16, 2013) based on any ground, except failure to disclose the best mode. PGR challenges must be filed at the Patent Office within the nine months following a patent’s issuance. Inter partes reviews (IPR) are trial proceedings to review the patentability of one or more claims in any issued patent in light of prior art in the form of patents or printed publications. IPR challenges to patents, having an earliest effective filing date before March 16, 2013, can be filed at any time, but an IPR petition for a patent having an earliest effective filing date on or after March 16, 2013, can be filed only after the nine-month post-grant review period elapses.

There are also rules governing the interplay of these proceedings with district court litigation. For example, a petition cannot be filed by a party that has already filed a civil action challenging the patent’s validity. For IPRs, a petition cannot be filed more than one year after the party was served with a complaint for patent infringement in district court. 

Post-grant proceedings are often viewed as a strategic alternative or supplement to federal litigation and are characterized by the following:

• Conducted before: PTAB.
• Time for Decision: 12-18 months from decision whether to institute a PGR or IPR trial (which is approximately 6 months from the petition filing).
• Institution Standard of Proof (PGR): More likely than not that at least one challenged claim is unpatentable.
• Institution Standard of Proof (IPR): Reasonable likelihood that petitioner would prevail with respect to at least one challenged claim.
• Standard of Proof at Trial: Preponderance of the evidence.
• Appeal: Both parties can typically appeal to the U.S. Court of Appeals for the Federal Circuit.

Post-grant proceedings require Panitch Schwarze’s comprehensive patent knowledge, renowned trial skills, and extensive experience before the USPTO and PTAB.

Representative Matters

Attorneys / Agents

Stephen E. Murray
John D. Simmons
Travis W. Bliss, Ph.D.
Dennis J. Butler
Erin M. Dunston
Ragi A.I. Elias
Philip L. Hirschhorn
Clark A. Jablon
Keith A. Jones
Aaron L.J. Pereira
Bijal Shah-Creamer
Stephany G. Small, Ph.D.

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