Post-Grant Review Lawyers
Safeguarding your innovations extends beyond the initial grant of a patent. At PV Law LLP, based out of Washington, D.C., our team of attorneys brings a sophisticated blend of technical and legal acumen to the table. With degrees in engineering, computer science, biochemistry and molecular biology, coupled with deep legal experience, we are uniquely positioned to navigate the complexities of post-grant reviews.
Post-grant reviews offer a critical opportunity to challenge the validity of a patent shortly after its issuance, providing a strategic tool for businesses to protect their technological assets.
Our attorneys have over 100 years of collective experience in patent enforcement and U.S. trade law to deliver Big Law patent experience with cost-effective solutions. Whether you are facing challenges to your patents or need to contest the validity of others, our multilingual team, fluent in English, Korean and Chinese, is ready to support clients across the globe with sophisticated, knowledgeable legal advocacy.
Understanding The Post-Grant Review Process
The post-grant review process is similar to inter partes review and allows third parties to challenge the patentability of claims recently granted by the USPTO. A request for post-grant review must be filed within nine months of the initial granting of the patent or a reissue of the patent. The petition can raise any ground of invalidity available in 35 U.S.C. § 282(b)(2) or (3). This includes invalidity under 35 U.S.C. § 112 (e.g., indefiniteness and lack of enablement or written description), which is not available in inter partes review.
For a post-grant review proceeding to be initiated, the challenging party must show that the challenged patent claims are more likely than not to be unpatentable. The owner of the patent at issue has three months after the PTAB issues a notice that a filing date for the petition has been granted to file a response to the petition. The PTAB then has three months to decide whether to institute review. If the proceedings are instituted, the PTAB will make a final decision within one year, with a possible extension for good cause no longer than six months.
Who Can File For A Post-Grant Review?
A post-grant review can be filed by any person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent. This review process must be initiated within nine months of the patent’s grant date or reissuance. It is a powerful tool for companies and individuals who believe that a patent granted by the United States Patent and Trademark Office (USPTO) should not have been issued due to issues like prior art or other patentability criteria.
Can You Appeal A Final Decision In A Post-Grant Review?
A final decision made in a post-grant review usually can be appealed. If parties involved are dissatisfied with the decision of the Patent Trial and Appeal Board (PTAB), they have the option to appeal to the United States Court of Appeals for the Federal Circuit. This appeal must be filed within a specified period after the decision is rendered. The appeal process allows the Federal Circuit to review the PTAB’s findings and conclusions on both factual and legal grounds. At PV Law LLP, our attorneys are well-versed in navigating these complex appellate procedures.
When Can A Petitioner Challenge A Patent In A Post-Grant Review?
If someone has claimed a patent, then the petitioner who is involved with the post-grant review process may be able to challenge it, claiming that it is unpatentable. They need to state a reason why they believe that it is invalid. Some examples include:
- Indefiniteness
- Enablement
- Novelty
- Obviousness
- Written description
Every case is unique, but our experienced firm can provide the guidance you need while considering these options and the legal steps that are necessary to officially proceed with the challenge.
What Type Of Discovery Is Allowed During A Post-Grant Review?
During the discovery process, any cited documents will be examined first. A declaration testimony will have been made, and this testimony could be subject to cross-examination. The same is true if there are any issues with inconsistent information at this stage in the process. These inconsistencies could warrant further examination.
In some cases, parties may want to go through additional discovery. They can do this together, by mutual agreement, or one party can use an authorized motion. Once this motion has been filed, it can make the request for additional discovery, even without the mutual cooperation of the other party. This does not mean it will be granted, but it is important for involved parties to know that they can take this step on their own if they believe it is necessary to gather the proper information relating to the case. That being said, discovery is usually much more limited than it would be in a district court proceeding.
Sophisticated And Effective Representation
At PV Law LLP, our post-grant review lawyers will provide the legal guidance you need throughout the process to protect your intellectual property or your products. You can trust us to use our technical knowledge and legal experience to your advantage.