Introduction

The America Invents Act ("AIA"), signed into law on September 16, 2011, created two types of post-grant proceedings: inter partes reviews (IPRs) and post-grant reviews (PGRs) Enough time has now passed to be able to look at PGR outcomes. This post reviews activity in PGRs, considers why there are still so few relative to IPRs, and identifies statistics showing why PGRs may be the better option for some patent challengers. Note that the PGR data remain fairly volatile because the numbers are small. The IPR numbers are larger and therefore more robust. We chose to represent the charts in percentage terms for comparison purposes, but the small size of the PGR dataset dictates that restraint must be exercised to avoid reading too much into the data.

Snapshot of PGRs to Date

Under AIA, PGRs came into effect on September 16, 2012 but are only available for patents having at least one claim with an effective filing date on or after May 16, 2013 ("AIA-patents"). Although a PGR petition must be filed within nine months of patent issuance and is thus temporally more limited than an IPR, it allows a broader range of statutory patentability challenges. For example, unlike IPRs, PGR grounds, as shown in Fig. 1, may be based on 35 U.S.C. §§ 101 and 112, and on prior art other than patents and printed publications. Non-statutory grounds, such as obviousness-type double patenting or inequitable conduct, are not allowed in either IPRs or PGRs.

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