About IPR and PGR

Inter Partes Review (or IPR) allows a person, who is not the owner of a patent, to file a petition with the Patent Office to institute a review of the patent based only on issues raised under 35 U.S.C. Sec. 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  Such a petition seeking an Inter Partes Review can only be filed after the later of 9 months after a patent issues, or the completion of a PGR involving the patent.  After the petition is filed, the patent owner is allowed a preliminary response to the petition, in an attempt to persuade the Patent Office not to institute an IPR.  The Patent Office shall authorize an IPR if it determines that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.  If the petition is granted, a patent owner may take discovery of the petitioner’s supporting evidence.  Ultimately, the patent owner files a response (potentially along with a motion to amend the claims of the patent).  The petitioner is then granted discovery on the patent owner’s supporting evidence and files a reply brief, including any new evidence and arguments needed to counter a proposed amendment.  Ultimately an oral hearing is scheduled, after which, the Patent Office issues a written, final determination.

Post Grant Review (or PGR) allows a person, who is not the owner of a patent, to file a petition with the Patent Office to institute a review of the patent based on any ground that can be raised under 35 U.S.C. 282(b)(2) or (3) – 101, 102, 103, and 112 (but not best mode). Such a petition seeking an PGR can only be filed within 9 months after a patent issues.  After the petition is filed, the patent owner is allowed a preliminary response to the petition, in an attempt to persuade the Patent Office not to institute a Post Grant Review.  The Patent Office shall authorize a PGR if it determines that it is more likely than not that at least one of the claims challenged in the petition is unpatentable.  If the petition is granted, a patent owner may take discovery of the petitioner’s supporting evidence.  Ultimately, the patent owner files a response (potentially along with a motion to amend the claims of the patent).  The petitioner is then granted discovery on the patent owner’s supporting evidence and files a reply brief, including any new evidence and arguments needed to counter a proposed amendment.  Ultimately an oral hearing is scheduled, after which, the Patent Office issues a written, final determination.

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