Post-Grant Review


The Leahy-Smith America Invents Act (AIA), a collection of federal statutes signed into law on September 16, 2011, has significantly impacted the intellectual property landscape. Under the AIA, several administrative post-grant patent trial proceedings were introduced as a means to challenge the patentability of issued U.S. patents, including Inter Partes Review, Post-Grant Review, and Covered Business Method Review.

The AIA was intended to establish an efficient system to improve patent quality and empowers the Patent Trial & Appeal Board (PTAB, formerly the Board of Patent Appeals & Interferences) of the United States Patent and Trademark Office (USPTO) to decide post-grant challenges and review patentability in a speedy and cost-effective manner. The PTAB must decide whether to institute a patent trial proceeding within six months of receiving a petition challenging patentability of one or more claims of a patent. Within twelve to eighteen months from institution of a trial proceeding, the PTAB will provide a final decision on patentability. Notably, the PTAB decisions on patentability are directly appealable to the U.S. Court of Appeals for the Federal Circuit. Due to the potential impact of these proceedings, a multi-disciplined approach is warranted. Brooks Kushman’s post-grant practice group is well-versed in patent litigation, patent prosecution, administrative trial proceedings, appellate practice before the PTAB, patent investigations, and patent searching; and thus is uniquely qualified to utilize these proceedings to challenge or defend patents.


Those seeking to challenge the validity of a patent outside the courtroom have extended options, including the newly established Post-Grant Review, a counterpart to Inter Partes Review. Similar to other post-grant proceedings, a party who is not the patent owner and has not previously filed a civil action seeking a declaratory judgment of invalidity, may petition for Post-Grant Review of one or more claims. Patentability of the claims under review is decided by the PTAB. The decision can be immediately appealed to the U.S. Court of Appeals for the Federal Circuit by either the patent owner or the patent challenger.

Post-Grant Review differs from Inter Partes Review and other post-grant proceedings in that:
  • A petition for Post-Grant Review may be requested within nine months after the grant or reissue of a first-inventor-to-file patent.
  • The standard of review requires the petitioner to show that it is more likely than not that at least one of the claims challenged in the petition is unpatentable or, alternatively, that there is a novel or unsettled legal question that is important to other patents or patent applications.
  • Discovery may be limited to evidence directly related to factual assertions advanced by either party in the proceeding, including cited documentation, cross-examination, and information inconsistent with positions advanced during the post-grant review proceeding; and either side may move for additional discovery if the parties cannot mutually agree.
  • The petitioner’s request to cancel one or more claims of a patent may be grounded on prior art issues such as lack of novelty and obviousness (similar to an Inter Partes Review); as well as other grounds not reviewable under an Inter Partes Review proceeding, such as patent-eligible subject matter, written description, enablement, and indefiniteness. Unlike Inter Partes Review, prior art-based challenges are not limited to patents or printed publications.


post-grant review


Brooks Kushman understands the intricacies and implications of post-grant challenges, how to staff such matters, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to vigorously represent our clients and prevail in such administrative proceedings, and coordinate efforts with possible parallel district court litigation and on appeal, recognizing the impact a decision can have on a patent portfolio, market opportunities, and the bottom line. At the same time, our prosecution team works closely with our clients to develop and implement client-specific strategies to help insulate a patent portfolio from a post-grant challenge. In conjunction with our Patent Searchers, we can track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art—to anticipate potential future challenges and institute proactive measures to minimize any potential risk. In view of the changing landscape and complex and competing interests at play, Brooks Kushman is able to leverage its depth of experience in all facets of intellectual property, to help our clients maintain competitive advantage.