Post-Grant Review (PGR)

Post-grant review (PGR) is the America Invents Act’s early-window challenge. It is broader than inter partes review but must be filed quickly.

Who may file, and when

• Who: any person who is not the patent owner (35 U.S.C. § 321(a)).
• Deadline: no later than nine months after the date of the grant of the patent or of the issuance of a reissue patent (§ 321(c)).
• Eligible patents: only patents subject to the first-inventor-to-file provisions, meaning at least one claim with an effective filing date on or after March 16, 2013.

What you can argue

Any ground that could be raised as a defense of invalidity under 35 U.S.C. § 282(b)(2) or (3). That includes:

• Patent-ineligible subject matter (§ 101)
• Anticipation and obviousness, based on any prior art and not only patents and printed publications (§§ 102, 103)
• Written description, enablement and indefiniteness (§ 112, other than best mode)

Institution standard

The Board institutes PGR if the petition shows that it is more likely than not that at least one challenged claim is unpatentable. A petition can also be instituted if it raises a novel or unsettled legal question that is important to other patents or applications (§ 324(a), (b)). The patent owner may file a preliminary response, as in IPR.

Timeline and burden

Once instituted, the trial follows the same one-year schedule as IPR, extendable by up to six months for good cause (§ 326(a)(11)). The petitioner must prove unpatentability by a preponderance of the evidence (§ 326(e)).

Estoppel

After a final written decision, the petitioner, its real party in interest, and its privies cannot assert in a later USPTO, district court or ITC proceeding that a claim is invalid on any ground the petitioner raised or reasonably could have raised during the PGR (§ 325(e)). Because PGR grounds are broad, the “reasonably could have raised” scope is correspondingly broad.

When to choose PGR

Choose PGR when you need non-prior-art arguments (especially § 101 or § 112), the patent is recent enough to be eligible, and you can prepare a full petition inside nine months. After that window, consider IPR or ex parte reexamination. The comparison chart lays out the differences.