The U.S. Patent and Trademark Office has new and popular procedures for challenging the validity of (in other words, killing) a competitor’s patent. The most powerful procedure, a Post-Grant Review (PGR), must be filed within nine months of the grant or “issue date” of any patent with a priority date of March 16, 2013, or later. This requires businesses to monitor their competitors’ patents and patent applications so that they avoid missing the nine-month window.
PGRs provide unique advantages that are not available in litigation or other post-grant proceedings. For example, the PGR process allows parties to challenge the patent on almost any ground that is a condition for patentability, including novelty, nonobviousness, definiteness, adequate written description, enablement and patentable subject matter; such a range of grounds is not available in any other single review proceeding. Further, the PGR process is advantageous because in it a patent has no presumption of validity as it would in a federal district court action. And the conventional wisdom is that the patent office board hearing post-grant challenges has been more favorable to the challengers. A PGR proceeding also usually costs much less than district court litigation and can result in a final decision on a much faster time line. Finally, the PGR process can force patentees to amend their claims in a way that opens up the door for challengers to acquire intervening rights, which can help drastically limit future infringement claims and damages. Continue Reading