Malcolm Rivera
Post-Grant Review (PGR) is a procedure for challenging the validity of a patent granted by the USPTO. It can be initiated within 9 months of a patent's issuance. To initiate a PGR, a patent challenger files a petition for review with the Patent Trial and Appeals Board (PTAB), describing the patent and claims and explaining why the claims are invalid based on prior art. Prior art in a PGR proceeding can include evidence of public use, on-sale activity, or other public disclosures, in addition to patents and printed publications. Notably, IPR petitioners relying on previously cited prior art do so at their own risk, as the PTAB may deny the petition under 35 U.S.C. § 325(d) if it deems the same or substantially similar prior art or arguments were previously presented.
| Characteristics | Values |
|---|---|
| Definition | Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. |
| Determination | Prior art is evaluated by patent offices as part of the patent granting process in what is called "substantive examination" of a patent application. |
| Availability | Prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. |
| Sources | Sources of prior art include published patents, patent applications, scientific and technical books, journals, and oral disclosures. |
| Timing | In the context of Post-Grant Review (PGR), prior art can be submitted within 9 months of a patent's issuance. |
| Evidence | Prior art must provide a description sufficient to inform a person skilled in the art of the subject matter falling within the scope of the claim. |
| Exceptions | Information covered by non-disclosure agreements, trade secrets, and unpublished work are typically not considered prior art. |
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What You'll Learn
The role of the PTAB
The Patent Trial and Appeal Board (PTAB) is an administrative adjudicatory body within the United States Patent and Trademark Office (USPTO). PTAB has several types of adversarial post-grant proceedings, including inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR).
To initiate a post-grant proceeding at the PTAB, a petition for review must be filed. This petition must identify each claim challenged, the grounds for each challenge, and the supporting evidence. The petitioner bears the burden of proof for unpatentability in PTAB proceedings, and the PTAB requires a showing by a preponderance of the evidence. The PTAB has up to three months to decide whether to institute a trial or deny the institution entirely.
In IPR proceedings, the PTAB considers whether the petition demonstrates a reasonable likelihood of unpatentability for at least one challenged claim. IPR proceedings are limited to patent validity challenges under the legal theories of anticipation and obviousness, and prior art is restricted to patents and printed publications.
On the other hand, PGR proceedings consider a different standard: whether it is more likely than not that at least one challenged claim is unpatentable. PGR prior art can include evidence of public use, on-sale activity, or other public disclosures in addition to patents and printed publications. PGR proceedings also allow for a broader range of legal challenges, including subject matter eligibility, enablement, and written description support.
PTAB decisions highlight the importance of addressing hearsay challenges when proving prior art. Hearsay, such as publication dates on non-patent literature, may be vulnerable to challenges by the Patent Owner, potentially excluding the evidence from consideration.
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Novelty searches
In the context of a Post-Grant Review (PGR) proceeding, novelty searches take on even greater significance. PGRs are trial proceedings conducted by the Patent Trial and Appeal Board (PTAB) to assess the patentability of one or more claims of a patent granted after March 15, 2013. PGRs offer a cost-effective and time-efficient alternative to civil litigation for challenging patents, but they also have broader estoppel effects that petitioners should be cautious about.
One of the key grounds for initiating a PGR is a lack of novelty, which refers to the invention being anticipated by or obvious over prior art. Prior art can include a wide range of evidence, such as patents, printed publications, public use, on-sale activity, and other public disclosures. It is essential to understand what constitutes valid prior art in a PGR proceeding to effectively challenge or defend a patent.
Conducting comprehensive novelty searches is crucial for both patent challengers and patent owners. For challengers, these searches provide the evidentiary basis for asserting that a patent lacks novelty and is therefore invalid. On the other hand, patent owners can use novelty searches proactively to strengthen their patents by identifying and addressing potential prior art issues before their patents are challenged. In either case, the ability to effectively search for and analyse prior art is essential for success in PGR proceedings.
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Public disclosures
Post-Grant Review (PGR) is a procedure for challenging the validity of a patent that was introduced in the America Invents Act (AIA) of 2012. A PGR can only be initiated within 9 months of a patent's issuance. A PGR petition must be filed by a third party before that party files any declaratory judgment on the invalidity of the patent's claims.
PGR prior art can include evidence of public use, on-sale activity, or other public disclosures. Prior art generally refers to anything that is made available or disclosed to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. This includes information disclosed to the public in written or oral form, or by use. Sources of disclosure in written form may include published patents or patent applications, or scientific and technical books and journals. Unpublished patent applications may also be considered prior art under certain circumstances, such as when an unpublished patent application was filed before the effective filing date of the patent application in question.
Certain patent offices may rely on the patent search results of other patent offices or cooperate with other patent offices to identify relevant prior art. Prior art may also be submitted by the public for consideration in examination or in opposition or invalidity proceedings. Relevant prior art identified by patent offices or patent applicants is often cited by patent applicants in patent applications and by patent offices in patent search reports.
It is important to note that traditional knowledge, such as traditional medicine, may be considered prior art, while information covered by non-disclosure agreements or similar agreements is typically not considered prior art. Information kept secret, such as a trade secret, is generally not considered prior art, provided that employees and others with access to the information are under a non-disclosure obligation.
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Patents and printed publications
To initiate an IPR, a patent challenger files a petition with the Patent Trial and Appeals Board (PTAB), which describes the patent and claims and explains why the claims are invalid based on prior art. This prior art consists of patents and printed publications. Printed publications cover a wide range of documents, including presentations, preparatory documents, academic theses, textbooks, and journal articles.
For a document to qualify as a "printed publication," it must be proven that it has been "disseminated or otherwise made available" so that individuals skilled in the relevant field can locate it with "reasonable diligence." This can include publications accessible to the public through a library or patent office, and there is no need to prove that someone actually viewed the publication.
In PTAB proceedings, the petitioner must prove the unpatentability of a claim by a preponderance of evidence. This often involves relying on printed publications and identifying the sources of evidence. However, hearsay is generally inadmissible in PTAB proceedings, and petitioners must be cautious when using previously considered prior art, as it may result in denial of the petition.
In addition to IPR, other post-grant proceedings such as Covered Business Method (CBM) review and Ex Parte Reexamination (EPRx) also rely on prior art consisting of patents and printed publications.
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Oral disclosures
In the context of PGR proceedings, prior art can include evidence of public use, on-sale activity, or other public disclosures. This means that oral disclosures that fall under these categories could be considered prior art. For example, if an invention was described or explained orally during a public event or sales pitch, this could be considered prior art.
However, it is important to note that the specific rules and definitions of prior art may vary depending on the jurisdiction and the patent office involved. Therefore, it is always advisable to consult with a patent expert or attorney to determine the specific requirements and considerations for a particular PGR proceeding.
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