§326 Conduct of Post-grant Review

Summary

The Director must write rules that explain how post-grant reviews work. The rules must make the case file public unless someone files papers and asks to seal them, in which case those papers stay sealed until the sealing request is decided. The rules must set the test for starting a review, allow extra information after a petition, decide how these reviews fit with other patent proceedings, and say that the Patent Trial and Appeal Board will run the reviews. Discovery is limited to evidence directly tied to the parties’ factual claims. The rules must allow protective orders for confidential information, set penalties for abusing discovery or the process, let either party have an oral hearing, give the petitioner at least 1 chance to file written comments, and require a final decision within 1 year after the review starts (the Director can extend that by up to 6 months for good cause and can change timing if cases are joined). The patent owner must be allowed to file a response after institution and include any extra factual evidence and expert statements they rely on. During a review, the patent owner may file 1 motion to amend to cancel challenged claims or propose a reasonable number of replacement claims. More amendment motions are allowed only if both parties agree to help settle the case or if the owner shows good cause. Amendments may not broaden the claims or add new subject matter, and information used to support an amendment becomes part of the patent’s public record. The petitioner must prove unpatentability by a preponderance of the evidence. The Director must consider effects on the economy, the integrity of the patent system, the Office’s efficiency, and the Office’s ability to finish reviews on time.