PGR Eligibility: An Uphill Climb For Transition Patents, PTAB Litigation Blog
A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that determining whether a patent is subject to the first-inventor-to file provisions, and therefore eligible for PGR, “is straightforward when the patentee filed the application from which the patent issued before March 16, 2013, or when the patentee filed the application on or after March 16, 2013, without any priority claim.” PGR2021-00044, Paper No. 10 at 14 (PTAB Aug. 3, 2021). But when a patent issues from a “transition application,” that is, an application filed on or after March 16, 2013, that claims the benefit of an earlier filing date, the determination is, in the words of the PTAB, “more complex.” Id. at 14-15. Indeed, it is not only more complex, but the burden falls on the Petitioner to show “that the patent contains or contained at any time a claim that lacks written description and enabling support in a priority application filed before March 16, 2013.” Id. at 15.
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