Unlike the more limited challenges allowed under inter partes review or existing reexamination proceedings, post grant review provides a broad ‘‘opposition’’ period for newly issued patents. Any person other than the patent owner may file a request for a post grant review proceeding within nine months of issuance or reissuance of a patent. Claims can be challenged on virtually any grounds used to challenge the validity of a patent claim, including 35 U.S.C. § § 101 and 112 (but not including best mode), and Sections 102 and 103. Petitioners can challenge novelty and nonobviousness based on evidence of public use, on-sale activity, and other public disclosures along with patents and printed publications. Post grant review can also allege lack of compliance with written description, enablement, or patent eligibility rules. The threshold standard for initiating post grant review is also lower than either existing reexamination proceedings or inter partes review—requiring only that the petitioner demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable.
Like inter partes review, the post grant proceeding will move at an expedited pace with proceedings expected to conclude within one year (with an additional six months for cause). Also like inter partes review, the proceeding will impose broad estoppel provisions that prevent parties ‘‘and those in privity with them’’ from maintaining any action in the PTO or asserting any invalidity defense in litigation inconsistent with a final PTAB decision on any issue raised or that reasonably could have been raised in post grant review.
Post grant review must be filed before the petitioner seeks a declaratory judgment challenging the validity of the patent in federal court. Post grant review challenges are available only for claims subject to first-to-file provisions after March 2013, so it will likely be some time before this new procedure becomes available.