Patents come in all shapes and sizes. There are long ones, short ones, ones that are hard to read, and easy ones. Some have 1 claim and some have 200 claims. Some have valid claims, and some not-so-much. But when it comes to post-grant procedures, the two new procedures only come in two statutory sizes: regular and super-sized. (Editor’s note: you won’t exactly find these titles in the America Invents Act.)
When a petitioner requests a post-grant review (PGR), the default situation is that the petitioner gets one year for the Patent Trial and Appeal Board (PTAB) to render a decision (measured from the date the petition for review is granted). That’s a lot like getting the “regular” sized French fries. Sometimes the PTAB will super-size it and the post-grant procedure may be allowed an extra 6 months to complete. That’s like getting a super-sized French fries. Unlike your favorite fast food restaurant, however, you may not know whether you will get the regular or the super-sized version at the time of ordering. And how frustrating is that?!
The Patent Office has the perhaps unenviable task of promulgating rules to decide when it will give you a regular PGR or the super-sized PGR. Parties to a PGR will likely have very different ideas about whether they want the regular or super-sized PGR. There are a lot of variables to consider. Here are a few:
- Number and complexity of rejections serving as the basis for the review
- Number and complexity of prior art references involved
- Number and complexity of the claims
- Volume and Complexity of evidence and discovery
- Aggressiveness of parties and resulting motion practice
- Nature of amendments, if any
- Mergers and additional related procedures
- Extenuating circumstances
- What the parties want
The real fun comes in deciding whether you want the regular PGR or the super-sized PGR. The analysis can be very similar to litigation with a just a twist of prosecution. (Or is it prosecution with just a twist of litigation???) It gets even more interesting when the factors are diametrically opposed in terms of whether a regular PGR would be better than a super-sized one. Over the next few posts, I am going to explore some of the interplay of these factors and the decision making involved. And since this is really the brave new world of patent law, there’s room for a lot of comment and ideas should you be so inclined.