• The New Post Grant Review (PGR) and Inter Parte Review (IPR) Procedures under US Patent Law
  • June 17, 2013
  • Law Firm: Lee Tsai Partners Attorneys-at-Law - Taipei Office
  • The new Leahy- Smith America Invents Act (AIA) has become effective as of September 16, 2012, and the new law consists of several unprecedented changes.  In particular, the new PGR and IPR procedures under AIA will have significant impact on the USPTO patent invalidity review procedures, because they look similar to the opposition/invalidation administrative litigation procedures adopted by many continental-law countries.  As such, technology companies both in and out of US should watch closely over this development and be prepared to take future actions for their protection accordingly.

     

    A.     General Requirements

     

    A PGR only applies to claims that are effectively filed after March 16, 2013, provided that an application must be filed within nine months after Grant or Reissue, and that grounds for PGR application may include all invalidity grounds allowed by the law including patent eligibility (101), anticipation (102), obviousness (103), written description/enablement (112), clarity, etc. While IPR applications can only be filed after nine months when PGR term has expired, and can only base on novelty and/or obviousness (102/103) violation to raise invalidity challenges.

     

    B.     Several points to note for PGR and IPR

    (1)   In case there are 20 or less claims to be challenged, PGR application fee is US$30,000, and US$23,000 for an IPR, provided fee will be raised proportionately in the event there are more than 20 claims to be challenged.

    (2)   Since these two review procedures do not allow anonymous applications, an applicant’s identity, together with its connection with the interested parties, must be disclosed.

    (3)   The review body under USPTO is The Patent Trial and Appeal Board (PTAB), and its final decision in writing will have a binding effect on the parties in their present or future lawsuits relating to the claims being challenged.

    (4)   An applicant’s burden of proof for PGR is “more like than not” test, while for IPR, it is “reasonable likelihood of success” test, both of which are far lower than the “clear and convincing evidence” test required for patent lawsuits.

    (5)   The parties to both PGR and IPR may conduct limited discovery procedures to collect and investigate relevant evidence, so that a patent holder bears a higher litigation burden than before.

    (6)   In the event the applicant has brought lawsuit in court to challenge validity of the claims in question, then no PGR or IPR will be allowed subsequently. Further, in case there is a PGR or IPR being reviewed by the PTAB, then a subsequent lawsuit in court should be stayed pending PTAB’s final decision.

     

    C.     Conclusion

     

    Since PGR and IPR will serve as semi-administrative litigations to be finally decided by the USPTO for the resolution of patent validity issues, US patent litigation defendants (including potential defendants) more likely will take advantage of the new PGR and IPR procedures to challenge the validity of

    the patents in suit. As such, Leetsai’s clients, to strengthen their US patent operations, may wish to consider seeking such remedy through PTAB as well

    for the following reasons:

     

    (1)   Costs to launch PGR or IPR are a lot cheaper than those to incur to fight in court (as the PGR and IPR costs maybe around US$100,000 to US$150,000, while those to do litigation in court will go as high as several millions US dollars.
    (2) Applicant can achieve more significant results by resorting to PGR or IPR than to a Court of law, as PTAB is a lot more experienced and technical-oriented in patent validity issues.  Also, applicant's burden of proof to win its case is substantially lower than that required in court (see A(4) above).