Post Grant Review (PGR)

Post Grant Review (“PGR”) applies only to first-to-file patents, that is, patents that contain or at any time have contained a claim having an effective date of March 16, 2013 or later.  The petitioner/challenger participates throughout the process, and is allowed to conduct discovery, take depositions, file motions, and participate at oral hearing. 

A PGR petition may be filed only with respect to “first-to-file” patents (that is, patents that contain or at any time have contained a claim having an effective date of March 16, 2013 or later), and can only be filed within nine months from the patent’s issuance date.  The PGR may not proceed if the petitioner filed an earlier civil action challenging the patent’s validity.  If the petitioner is unsuccessful, all invalidity challenges that were raised or reasonably could have been raised will be unavailable to the challenger in a subsequent post-issuance proceeding or civil action.  The PTO initial request fee for a PGR is $12,000 for up to 20 claims, plus $250 for each claim in excess of 20 claims total.  If the PGR is initiated, there are additional PTO fees of $18,000 for up to 15 claims, plus $550 for each claim in excess of 15 claims total.

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