The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review

Abstract

Of the three major ex post patent validity challenge mechanisms that the 2011 Leahy-Smith America Invents Act put into place, the third is beginning to show signs of use. Post-grant review is an administrative proceeding of remarkable breadth as compared both to inter partes review and to the transition program for covered business method patents. Thus far, however, patent challengers have made very limited use of post-grant reviews: in the nearly three years since the procedure became available, the United States Patent and Trademark Office has received only about two dozen petitions for post-grant review. By contrast, the number of IPR and CBM petitions to the agency have been higher by orders of magnitude. The slow start is understandable, as post-grant review is available only to challenge patents that have issued from applications filed under the new “first inventor to file” framework of the America Invents Act, and even the earliest patent applications under the first-inventor-to-file regime could only recently have begun to emerge from patent examination. Nevertheless, an initial empirical and institutional analysis of post-grant review is now timely. A great and growing body of empirical research is now emerging on the uses (and potential abuses) of IPR and CBM review proceedings, and this research has important lessons for empirical analysis of post-grant review. Legal challenges have also been mounted against the very framework in which the AIA’s patent validity review mechanisms operate; these legal policy debates, too, bear directly on how post-grant review will function and how effective it will be in achieving its intended aims. This Article frames that initial analysis of post-grant review and offers suggestions for empirically evaluating salient institutional features of ex post patent validity review in the administrative agency setting of the USPTO.

Keywords: patent, administrative, empirical, post grant review, inter partes review, covered business method, collective action, America Invents Act, PGR, IPR, CBM, PTAB, USPTO, AIA

JEL Classification: D23, D73, K23, K41, O31, O34, O38