USPTO Post-Grant Trials Handbook

USPTO Post-Grant Trials Handbook covers the three new post-grant proceedings to challenge the validity of an issued patent introduced by the American Invents Act: inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM). These review proceedings have different requirements, restrictions, and review standards. Accordingly, a party seeking to challenge the validity of an issued patent must consider each situation and determine which vehicles are available and decide which one to use. 

USPTO Post-Grant Trials Handbook starts with analysis of the petition for each of these procedures, describes how to address each incremental stage, and then culminates in appeals to the Federal Circuit. It provides the attorney with:

• Step-by-step guidance for negotiating filings, motions and discovery, offering insight and strategies for each aspect of the case along the way
• Comparison charts covering the differences in procedures, availability, grounds, estoppel and standards for each type of proceedings
• Checklists to ensure all requirements are included in petitions and responses
• Timelines for each type of proceeding as an aid to keep on track and not miss important deadlines
• Relevant codes, statutes and citations to PTAB precedential decisions

The United States Patent and Trademark Office (USPTO) periodically publishes statistics on the post-grant proceedings, which has shown a high number of IPR petitions being filed since the system became effective on September 16, 2012. The CBM, which also became effective on September 16, 2012, is also regularly utilized, although the number of petitions is much lower compared to IPR due to the statutory restrictions that apply to the CBM. Inter Partes Review, Covered Business Method challenges and Post-Grant Review represent the hottest area of patent law, and are currently widely popular mechanisms for challenging the validity of patents. These post-grant trials have caused one of biggest strategic shifts in the way that practitioners approach both patent prosecution and patent litigation in decades. At the time of this publication, PGR has not been utilized nearly as much, mainly because PGR is only available to patents that have an effective filing date of March 16, 2013 or later and are issued under the new first to file system.