Post-Grant Review

Definition

Post-grant review is a process established by the America Invents Act (AIA) that allows third parties to challenge the validity of an issued patent at the United States Patent and Trademark Office (USPTO). This review procedure provides an administrative avenue for contesting a patent's patentability after it has been granted, as opposed to challenging it through litigation in federal court.

5 Must Know Facts For Your Next Test

1. Post-grant review allows third parties to challenge the validity of an issued patent on the grounds of lack of novelty or obviousness based on prior art, as well as on other patentability requirements such as enablement and written description.
2. The post-grant review process must be initiated within 9 months of the patent's issuance, providing a timely opportunity to address patent quality concerns.
3. Successful post-grant review can result in the cancellation or amendment of one or more claims in the challenged patent, strengthening the public domain and deterring patent trolls.
4. The high standard of proof required in post-grant review (preponderance of the evidence) is lower than the clear and convincing evidence standard required in district court litigation, making it a more accessible option for challenging patent validity.
5. The availability of post-grant review has been credited with reducing the number of patent lawsuits filed by non-practicing entities (NPEs), commonly referred to as 'patent trolls,' as they now face a more efficient administrative avenue for challenging patent validity.

Review Questions

• Explain how the post-grant review process established by the America Invents Act (AIA) differs from challenging a patent's validity through federal court litigation.
  • The post-grant review process established by the AIA provides an administrative avenue for challenging the validity of an issued patent at the USPTO, as opposed to litigating the issue in federal court. The key differences are that post-grant review has a lower standard of proof (preponderance of the evidence vs. clear and convincing evidence), a shorter timeline for initiating the challenge (within 9 months of issuance), and the potential for a more efficient resolution of patent validity concerns. This administrative process is intended to serve as a more accessible and cost-effective alternative to federal court litigation for addressing patent quality issues.
• Describe how the availability of post-grant review has impacted the activities of non-practicing entities (NPEs), commonly referred to as 'patent trolls.'
  • The availability of post-grant review has been credited with reducing the number of patent lawsuits filed by non-practicing entities (NPEs), or 'patent trolls.' These entities, which acquire patents not to produce products or services but to extract licensing fees or settlements, now face a more efficient administrative avenue for challenging the validity of the patents they assert. The lower standard of proof and shorter timeline for initiating a post-grant review challenge make it a more accessible option for addressing patent quality concerns, potentially deterring NPEs from pursuing questionable patents in the first place and reducing their ability to leverage weak patents for financial gain.
• Evaluate the role of post-grant review in the broader context of the U.S. patent system and efforts to thwart patent trolls.
  • Post-grant review is a key component of the reforms introduced by the America Invents Act, which aimed to address longstanding concerns about patent quality and the proliferation of abusive patent litigation tactics employed by non-practicing entities, or 'patent trolls.' By providing a more efficient and accessible administrative process for challenging the validity of issued patents, post-grant review empowers third parties to address patent quality issues in a timely manner, strengthening the public domain and deterring the assertation of questionable patents. This, in turn, supports broader efforts to curb the activities of patent trolls, who often rely on the threat of costly litigation to extract settlements from companies, even when the underlying patents may be invalid. The success of post-grant review in reducing patent troll lawsuits demonstrates its important role in improving the overall functioning and integrity of the U.S. patent system.

Related terms

Inter Partes Review (IPR): A trial proceeding conducted at the USPTO to review the patentability of one or more claims in an issued patent based on prior art consisting of patents or printed publications.

Covered Business Method (CBM) Review: A type of post-grant review that targets business method patents, which are patents that claim a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.

Derivation Proceeding: A trial proceeding conducted at the USPTO to determine whether an inventor named in an issued patent derived the claimed invention from another inventor.