IPO Chat Channel Webinar - Post-Grant Review: Coming Soon

Fish’s Marc Wefers, Principal in the firms Boston office, will speak at IPO’s upcoming webinar regarding post-grant proceedings.

The first patents issuing from applications subject to the first-inventor-to-file provisions of the AIA are likely to emerge from the USPTO in the next few months. That also signals the debut of post-grant review, the third in the trio of post-grant proceedings created by the 2011 law (the first two being the program to challenge covered business method patents and the already popular inter partes review.)

Post-grant review is targeted at newly-issued patents within nine months of issuance. But unlike inter partes review, in which a patent is scrutinized only against newly-submitted prior art consisting of patents or printed publications, the challenger in post-grant review can ask the PTAB to review the patentability of claims on any ground, including Section 101 (subject matter eligibility), Sections 102/103 (anticipation/obviousness, including unpublished materials), Section 112 (written description, enablement, indefiniteness), and Section 251 (claim broadening). In this aspect, post-grant review more resembles an opposition proceeding in Europe.

Our panel includes a PTAB Judge, and an in-house counsel and law firm attorney who are both experienced in AIA post-grant proceedings at the PTAB and in European opposition. They will consider the ways in which PGR is likely to develop, including whether certain industries are liable to be targeted; how to avoid pitfalls in pursuing parallel challenges in the U.S. and Europe; the deterrence of the estoppel provisions; and important implications for a company if it steps up the monitoring of competitors' patent applications.