Do You Want That Post-Grant Review Super-Sized? – Part I

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.

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