Reminder: Are You Monitoring Your Competitors' Patents for Post-Grant Review?

November 22, 2015
Post by Jill N. Link, Pharm.D.

There were many changes implemented by the USPTO as a result of the America Invents Act ("AIA"or generally Patent Reform). One these is the post-grant procedure (also referred to as Post-Grant Review (PGR)) for challenging the validity of a competitor's patent. However, there is a very limited time frame during which this useful procedure can be employed - within nine months of the "grant date"or "issue date"of any patent. This applies to patents having an earliest effective filing date (or a priority date) of March 16, 2013, or later. As a result of this limited time frame, you may consider proactively monitoring your competitors' patents to avoid missing this nine-month window.

PGRs can be very beneficial as they provide certain advantages not available in litigation or other post-grant proceedings. A detailed question and answer about PGRs is availablehere. First and foremost, a PGR allows a party to challenge a newly-issued patent on virtually any basis of patentability. This includes patentable subject matter, novelty, non-obviousness, definiteness, written description, and enablement. This breadth of grounds for challenging a patent is not available in any other review proceeding in effect. A second key benefit to PGRs is that the patent is not afforded any presumption of validity.  This is very different from a litigation in a federal district court where a patent is presumed valid. A third benefit is that PGRs are far less costly than rushing into litigation to challenge the validity of a patent. A still further benefit is the speed of decision, which outpaces litigation as well. The net effect of these (and other) benefits is that PGRs should be considered as a tool for challenging your competitor's newly-issued patents. However, it goes without saying that you must know about the new patents to be able to challenge them.

To effectively monitor for your competitor's new patents to avoid missing the nine-month window, it is beneficial to set up a systematic monitoring system.  Monitoring or "alert"systems provide a systematic and periodic search of the USPTO patent databases for patents and published patent applications. Alerts are generally set up by categories including, patent owner name (company to whom the patent is assigned), inventor name(s) (if known, such as the case of prolific corporate inventors), and other Boolean search terms.

As previously reported by Filewrapper┬« (available here), the USPTO has made available a search and alert mechanism for pre-grant publications that may be relevant or of interest to a party. This Patent Application Alert Service (PAAS) helps subscribers to stay current with patent application publications. Certainly this could be utilized to then monitor publications of interest to see whether they are granted and patents issued therefrom. However, to comply with the time frames for taking advantage of post-grant review, what mechanism should a party utilize to specifically target patent grants? The USPTO certainly provides the capability for free searching for patents (seehere an overview and capabilities for searching). However, most parties interested in a strategy monitoring of competitors for purposes of PGR utilize a subscription service. Various companies and services provide such Alerts to easily identify key information on new patents as soon as possible and allow a business to determine whether the new patent should be challenged in a PGR.  A discussion with your patent attorney to understand available options is your best first step in this process.

As these and other strategic advantages of PGRs become more accepted and utilized, you may consider investing the time and resources to set up a monitoring and alert strategy to more efficiently utilize PGRs.

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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.


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