How do I file a post-grant review (PGR) petition?

How Do I File a Post-Grant Review (PGR) Petition?

A Post-Grant Review (PGR) is a procedure that allows third parties to challenge the validity of a patent after it has been granted. This process is available for patents issued from applications filed on or after March 16, 2013. PGRs provide an avenue for reviewing the patentability of one or more claims in a patent based on any grounds that could be raised under 35 U.S.C. §§ 101, 102, 103, and 112.

Key Steps to File a Post-Grant Review (PGR) Petition

1. **Eligibility**: Ensure the patent is eligible for PGR. A PGR must be filed within nine months of the grant date of the patent or issuance of a reissue patent. Only patents issued from applications filed on or after March 16, 2013, are eligible for PGR. 2. **Grounds for Petition**: Identify the grounds for challenging the patent. PGR can be based on any grounds related to patentability, including prior art, lack of novelty, obviousness, inadequate written description, or claims that are not enabled or indefinite. 3. **Petition Preparation**: Prepare the PGR petition, which should include:

  * The petitioner's standing and evidence of interest.
  * Identification of all claims challenged and the specific grounds for each challenge.
  * Detailed statements of the factual and legal basis for each challenge, including citations to supporting evidence.
  * Copies of any supporting documents, such as prior art references.

4. **Filing Fee**: Pay the required filing fee. The fee varies based on the number of claims challenged and the type of filing entity (large or small/micro). 5. **Submission**: File the petition with the United States Patent and Trademark Office (USPTO). The petition must be served on the patent owner at the correspondence address of record for the patent.

Detailed Steps

1. Draft the Petition

**Introduction**: Include an introductory section that provides an overview of the petitioner’s standing and the grounds for the review.
**Claim Construction**: Present a construction of the claims being challenged. This involves interpreting the claims in light of the patent specification and relevant prior art.
**Grounds for Challenge**: For each claim challenged, specify the grounds for invalidity, supported by detailed arguments and evidence.
**Supporting Evidence**: Attach all supporting evidence, such as prior art documents, expert declarations, and any other relevant materials.

2. File the Petition

**Electronic Filing System (EFS-Web)**: Use the USPTO’s EFS-Web system to file the PGR petition electronically.
**Service on Patent Owner**: Serve a copy of the petition on the patent owner. The service can be done via email if the patent owner has consented to electronic service, otherwise, use postal service or other acceptable means.

3. USPTO Review

**Preliminary Response**: The patent owner has three months to file a preliminary response to the petition, arguing why the PGR should not be instituted.
**Decision on Institution**: The USPTO’s Patent Trial and Appeal Board (PTAB) will decide whether to institute the PGR within three months after the patent owner's preliminary response or the expiration of the time for filing such a response.
**Proceeding**: If the PGR is instituted, the PTAB will conduct a trial, including motions, discovery, and oral hearings, if necessary.

4. PTAB Decision

**Final Written Decision**: The PTAB will issue a final written decision on the validity of the challenged claims within one year of instituting the review, with a possible extension of six months for good cause.

References

This article provides a comprehensive guide on how to file a post-grant review petition, detailing each step in the process and linking to relevant categories and references for further information.

How do I file a post-grant review (PGR) petition?

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