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a petitioner who has fi led a civil action challenging the validity of a claim of the patent. Likewise, if the petitioner or its real party in interests fi les a civil action subsequent to petitioning for post-grant review, the civil action will be automatically stayed. However, a counterclaim challenging the validity of a patent claim is permissible. Additionally, if the patent owner fi les suit within three months of issuance of the patent, a court may not stay consideration of a motion for preliminary injunction on the ground that a petition for post-grant review has been fi led or that post- grant review has been instituted. Conclusion of post-grant review may lead to estoppel before the USPTO, a district court or the ITC on any ground that the petitioner raised or reasonably could have raised. However, a timely settlement of post-grant review will avoid estoppel as to the settling petitioner. Either party to post- grant review may appeal to the Federal Circuit.
Strategy considerations: Post-grant review should be considered by competitors who would like a relatively rapid adjudication of patentability issues, resolution of novel or unsettled legal questions, or who do not have standing to bring an action in district court. It
is the only proceeding discussed here in which the third party can directly attack the claims for unpatentability based on non-prior art grounds. T us, post-grant review may be of heightened interest in the life sciences, as patents in the life sciences may be vulnerable to enablement or written description challenges. T e ability to obtain resolution of any patentability issues early on in the life of the patent is appealing to the life sciences and pharmaceutical industries because the enormous research and development and regulatory costs for a new product must generally be incurred before the competitor has standing to bring a declaratory judgment action. However, if the competitor’s strongest arguments are based on grounds that can be raised via inter partes review, the competitor should consider the benefi ts of seeking that rather than post-grant review, so as to minimise the potential estoppel eff ects.
Inter partes review
As of September 16, 2012, inter partes review will be available for all patents, irrespective of fi ling date. However, it can be instituted nine months aſt er issuance of the patent or aſt er the termination of any post-grant review proceeding. Inter partes review will not be available to a
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petitioner who has fi led a declaratory judgment action challenging the validity of a claim of the patent, nor will it be available to a petitioner who had been served with a complaint for patent infringement more than one year prior to fi ling a petition for inter partes review on the patent in suit. T e standard for initiating inter partes review is whether the petition shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims. However, before instituting it, the USPTO will consider any preliminary response that the patent owner has fi led. Adjudication will have many parallels to adjudication of post-grant review as discussed above. However, the scope of discovery in inter partes review may be narrower, and it remains to be seen how the USPTO will interpret the discovery provisions of the AIA.
Strategy considerations: Inter partes review may be suitable for a competitor that has solid prior art-based unpatentability arguments, but who wishes to avoid the possibility of creating an estoppel as to its other invalidity arguments. An accused infringer who has been served with a complaint must be wary of the time constraints. Because inter partes review can be sought only
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