An Oct. 27, 2013 article in the Wall Street Journal (“Scrivener's Error Undercuts Patent-Law Overhaul”) questioned the value of new U.S. Patent and Trademark Office post-grant procedures introduced under the America Invents Act (AIA). In particular, the article referred to what it called an “error” in the AIA that bars an unsuccessful post-grant challenger to take the matter to court for another try. It goes on to note that House Judiciary Committee Chairman Bob Goodlatte (R.-Va.) has included language in his recently introduced patent bill to change this section of the AIA. The piece closed with a statement that no one is using post-grant review, noting “only once has a party filed a petition to use the procedure, and that filing was made by mistake.”
The article is a bit misleading. There is actually more than one new AIA post-grant review procedure available to challengers. Post-grant review (PGR) is the process described in the Journal article above. A petition for PGR must be filed no later than nine months from the patent issue date and allows the petitioner to raise all grounds of patent invalidity. The AIA estoppels for civil actions are one of the safeguards for AIA patent owners. The “raised or reasonably could have raised” language that bars taking another run at a patent in the courts as well in the USPTO applies to both PGRs and IPRs. The Goodlatte Bill is only proposing to change the PGR estoppel by changing the language to “raised”. By doing so, the Goodlatte PGR estoppel would only prevent the patent challenger from raising the grounds that were in the PGR in a later IPR or civil action.