POST GRANT REVIEW (PGR) SERVICES

What Is A Patent Post Grant Review? 

A post-grant review (PRG) is a trial proceeding conducted at the United States Patent and Trademark Office (USPTO) to review the patentability of one or more claims in a patent. The PGR process begins when a third party files a petition on or before the ninth month following the grant or reissue of a  patent. The USPTO will institute the review to show that it is more likely than not that at least one claim challenged is unpatentable. As opposed to IPR, where the grounds for a challenge are limited to anticipation and obviousness, a  third party may challenge a patent through the PRG process by raising the following against the patent:

• Patent subject matter eligibility or utility (35 U.S.C. § 101);

• Invalidity (35 U.S.C. § 282(b)(2) or 35 U.S.C. § 282(b)(3));

• Anticipation (35 U.S.C. § 102);

• Obviousness (35 U.S.C. § 103);

• Lack of compliance with enablement, written description or indefiniteness (excluding best mode) (35 U.S.C. § 112); and/or

• Novelty (35 U.S.C. § 102).

The post-grant review was introduced by the America Invents Act (AIA) as a counterpart to inter partes review.  

Requirements For A Post Grand Review Petition 

Post-grant review petition must meet the following minimum requirements:

• Identifying the real parties in interest;

• Identifying all claims challenged; 

• Explanations of all grounds of unpatentability for the challenged claims;

• Identifying all evidence relevant to the challenged grounds;

• A detailed description of all evidence identified; and

• Filing fee paid. 

While the patent owner cannot initially submit rebuttal evidence directed to the validity challenges raised by initial PRG filing, the patent owner may optionally, within three months of the initial PRG request, submit a preliminary response addressing the overall issues in an attempt to explain why the PGR should not be instituted. However, if a PRG proceeding is instituted and not dismissed, a final determination may be issued by the PTAB within twelve months from the institution's date. Optionally, and upon good cause shown, the PTAB can extend the proceedings for a one-time extension of six months. Timing and filing of a post-grant review are very critical to the success of a post-grant review petition. For instance, a PGR petition must be filed before a petitioner seeks a declaratory judgment in federal court challenging the validity of the patent claims. Our Dallas patent post-grant review attorneys represent clients in patent post-grant review proceedings and complex litigation. We also represent clients in patent prosecution, enforcement, and a wide variety of IP disputes. 

Dallas Post Grant Review  Lawyers

Our Dallas Post-Grant Review attorneys have earned a reputation for aggressive, responsive, efficient, and most importantly, successful litigation. While we are prepared to take every case to trial, we know from our clients' perspective that often, the best litigation is the one that settles in mediation. Our straight forward unbiased guidance can help you avoid litigation whenever possible. However, if needed, our litigators are skilled in negotiation techniques and have a reputation for achieving very favorable results for our clients both in-court and out-of-court. Our IP lawyers can prepare and file post grant review petitions given our extensive IP skills and experience.