Post Grant Outcomes is a Patent Quality evolving program challenged to develop a process for providing post grant information from sources, such as the Federal Circuit, District Courts, the Patent Trial and Appeal Board (PTAB), and the Central Re-examination Unit CRU), to examiners in a way most useful to their patent application examination process. To consider the entirety of post grant proceeding information available is just not manageable - so how do we bring the most useful information to the attention of examiners?
Notably, post grant proceedings were enhanced with the enactment of the America Invents Act (AIA). The AIA established three new trial proceedings for third-party petitioners to challenge issued patents at the PTAB prior to litigation at the Federal Circuit or District Courts:
- Post Grant Reviews (PGRs),
- Inter Partes Reviews (IPRs), and
- Covered Business Method Reviews (CBMs).
When considering potential pilot programs to address the challenges of Post Grant Outcomes, over 5,000 AIA trial petitions had been filed, with over 90% filed as IPRs. For current AIA trial statistics, see the PTAB AIA Trial Statistics page. Of the first IPRs to reach a conclusion, 25% of the claims challenged were found to be unpatentable in view of the prior art provided. Since many of these challenged patents have related child applications currently pending, the patentability determination in these child applications could benefit from consideration of the prior art focused on in the AIA trial proceedings.
The Post Grant Outcomes Pilot was developed to transfer the information in IPR petitions to examiners of related child applications that are currently pending. This Pilot will improve the quality of patentability determinations in related applications by:
- Notifying examiners when they have an application related to an AIA trial,
- Streamlining access to the contexts of AIA trials, and
- Gathering and disseminating best practices.
Visit the Post Grant Outcomes Pilot page for more information.
Summary of Post Grant Outcomes
The purpose of the Post Grant Outcomes Program is to learn from all post grant proceedings and inform examiners of their outcomes.
Three objectives are proposed to accomplish this:
- Enhanced Patentability Determinations in Related Child Applications
o Providing examiners with prior art submitted during PTAB post grant proceedings
- Targeted Examiner Training
o Data collected from the prior art submitted and examiner behavior from Objective 1 will provide a feedback loop on best practices that can be used for training
- Examining Corps Education
o Provide examiners a periodic review of post grant outcomes focusing on technology sectors