In the U.S., Alnylam filed a total of five Post Grant Review
petitions against newly-issued Silence patents challenging the validity of the issued claims.
Fanelli's expertise lies in patent portfolio creation and management, counseling, technology transactions, due diligence, opinion work, including drafting novelty, freedom-to-operate, and invalidity opinions, and inter partes review and post grant review
These include post grant review
proceedings including reexaminations, inter partes reviews and covered business method challenges on behalf of a number of industry leaders.
Part I next explains the structure of the three main administrative proceedings to challenge the validity of a patent before the PTAB--IPR, post grant review
, and covered business method.
For example, you can file a petition for Inter Partes Review or Post Grant Review
of the patent at the USPTO, or file suit in a federal court.
In a recent decision that may make it even more likely for companies to seek inter partes or post grant review
, the Federal Circuit found statutory estoppel provisions do not reach grounds denied by the Board as "redundant" at the institution stage.
Because almost any invalidity argument "could be raised" in Post Grant Review
, failing to succeed in a challenge to a patent severely limits a party's later options, especially because a party may not appeal any decision until after a final decision has been rendered, as discussed below.
In certain circumstances, a party may seek to invalidate the asserted patent(s) by petitioning the United States Patent & Trademark Office to review the patent, such as by filing a petition for Inter Partes Review, Covered Business Method, or Post Grant Review
* Makes changes on abusive conduct in IPR and post grant review
(PGR) proceedings before the PTAB;
(303) See Leahy-Smith America Invents Act [section] 18 (discussing the transitional proceeding implement under the AIA, which mandates the standards and procudures of post grant review
Post grant review
is a new procedure introduced by the AIA, which allows a non-patent owner to file a petition to institute a review of a granted patent.
For example, patents issued from less well prepared applications are more vulnerable as a defensive tool, particularly under the new Post Grant Review
(PGR) system introduced by the AIA.