breakingnewsass=”alignleft size-full wp-image-1548″ title=”breakingnews” src=”” alt=”breakingnews” width=”162″ height=”123″ />As first reported here yesterday, changes to S. 515 are underway (the amendment is now available to the public and found here).  In yesterday’s post we outlined proposed changes to S.515 relative to reexamination practice, below we outline the changes to the new Post-Grant Review revocation mechanism.

 A.  Post-Grant Review

Post-Grant Review, is procedurally similar in many respects to Inter Partes Review, but, is not limited to patents and printed publications, but any ground that could be raised under paragraph (2) or (3) of  § 282 (b).  Post Grant Review may be initiated ONLY within 9 months of grant or issuance of a broadening reissue.  The Patent Owner may file a Preliminary Response within two months of the Third Party Request to set forth reasons why the Request should be denied.  The Director will authorize Post-Grant Review if the information presented in the petition, if not rebutted, would demonstrate that “it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As with Inter Partes Review, the familiar SNQ standard has been replaced.  Note that the standard for Post-Grant review is different than the standard for Inter Partes Review discussed yesterday. The Director has 3 months to grant or deny the petition after the Preliminary Response (if any).

PPG Comment:  The 9 month window is down from the previously proposed 12 months of S.515.  The proposed standard for Post-Grant Review does not use the “reasonable likelihood of prevailing” language of Inter Partes Review, it is not clear why this is the case, or how the standards truly differ.  Perhaps an argument can be made that Post-Grant Review is the more liberal of the two standards. 

        1. Estoppel

As with Inter Partes Review, the estoppel provision of 35 U.S.C. § 315 is revised to “raised or reasonably could have raised” (emphasis added)

PPG CommentAs noted yesterday, this language is an improvement, but still open to interpretation.

Further, 315 estoppel is extended to ITC proceedings (see our earlier discussion of this issue here

        2.   Timing

 Post-Grant Review may not be initiated or maintained if petitioned more than a few months after a concurrent litigation is filed. 

        3.   Discovery/Proceedings Conduct

The Director would establish rules for discovery of relevant evidence, including depositions of witnesses submitting declarations and affidavits. 

The Director may prescribe sanctions for abuse of discovery and process, or any other improper or harassing tactics.

The Director also would prescribe regulations to:

-Provide either party with the right to an oral hearing as part of the proceeding.

-Require the proceeding be concluded within 12 months, extendable to a maximum of 18 months.

-Allow for settlement of the proceeding, with no estoppel applied to the third party.

-Provide that the final determination be provided by the Patent Trial and Appeal Board.

One year subsequent to enactment, Post-Grant Review will apply to all patents issued on or after that date. (emphasis added). 

PPG Comment: The applicability of Inter Partes Review is retroactive, Post-Grant only applies to patents issued on or after a date linked to enactment of the legislation. 

Allowing 2 months for a Preliminary Response, followed by a grant or denial within 3 months builds in a 5 month delay on the front end of Post-Grant Review (likely the same delay for Inter Partes Review).   Assuming the USPTO takes the full 12 months plus 6 month extension, the proceeding would span 2 years in a worst case, 1.5 years in a best case scenario.  The major difference between Inter Partes Review and Post-Grant review appears to be grounds for invalidity, effective date provision, availability window, and standard for initiating.  Most other procedural mechanisms appear to be the same.