Who may file a petition to institute a post-grant review?
A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil action challenging the validity of a claim of the patent.
A petition may not be filed where the petitioner, the petitioner’s real party-in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
The answer to this question can be found in the PTO supplement known as, “Inter Partes, Post Grant, and Covered Business Method Review Final Rules”. This supplement covers New Trial Proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
This question and answer comes from section 42.201 of the supplement. The following is a brief summary of section 42.201.
New Trial: Post Grant Review
Section 42.201: Who may petition for a post-grant review.
Section 42.201 provides who may file a petition for post-grant review.