A third party may use the PGR request to challenge a patent having at least one claim with an effective filing date March 16, 2013, within nine months after the issue date of the patent or the reissue certificate. If the petitioner has already been sued for infringement of the patent, the PGR petition must be filed no later than one year after the petitioner was sued. The PGR request may be based on any grounds that may be raised under 35 USC 282(b)(2) or (3), such as utility under 35 USC 101, novelty under 35 USC 102, obviousness under 35 USC 103, and enablement, written description and definiteness under 35 USC 112.
Limited motion-based discovery is available to the parties to the PGR. Unless the patent owner and petitioner agree to one of the mandatory discovery provisions under 37 CFR § 42.51, all other discovery by the patent owner and petitioner must be requested by motion, which requires a showing of good cause as to why the discovery is needed. The petitioner is required to produce any exhibits, and any affiants, declarants or experts whose testimony was referenced in the petition for cross examination. Each party is also required to provide any relevant information that is inconsistent with a position it advances during the proceeding concurrently with the filing of the documents or things that contains the inconsistency.
Cardinal can help you with any of the following in preparing the request for the PGR: