Post-Grant Patent Uncertainty

Another core change of the America Invents Act is the creation of a nine-month, post-grant opposition review period. This provision is effective one year from enactment of the bill, but applies only to first-inventor-to-file applications filed 18 months after enactment. The post-grant review process allows companies to challenge patents on any grounds of invalidity during a nine-month window from the issue date of a patent, with an aim of shifting the patent challenging arena from the courts to the USPTO. If the goal of post-grant opposition is achieved, the medtech industry will benefit from a reduction in costly and time-consuming patent litigation.

Moreover, an ongoing post-grant review will help ensure that high-quality patent applications deserving of patent rights are issued. Much like the first-inventor-to-file change, however, this provision is more valuable to large medtech companies with the budget to consistently monitor and challenge competitors’ patents. A decrease in litigation also may not occur to the extent expected because final post-grant review decisions are appealable to the Court of Appeals for the Federal Circuit. Though more relevant to companies with larger budgets and resources, engaging in post-grant opposition review will allow medtech companies to directly affect the quality of industry patents and potentially invalidate competitors’ newly issued patents.