The Patent Trial and Appeal Board broke new ground when it upheld an eye solution patent challenged in post-grant review, a decision that highlights some of the challenges petitioners face in the little-used America Invents Act proceeding, particularly when relying on prior art that is not a printed publication.
The PTAB decided last month that Altaire Pharmaceuticals Inc. failed to prove claims in a Paragon BioTeck Inc. patent were invalid. The decision marked the first time the board has upheld a patent after a post-grant review, or PGR.
“I think that perhaps people think that PGRs, unlike inter partes review, might be treated more like a reexamination or an examination because the grounds for reconsideration of the patent are more extensive than inter partes review,” said Kia Freeman, a partner at McCarter & English LLP.
“I think that they thought the board might be a little more generous and allow the petitioner a little more leeway,” she said. “But it doesn’t look the petitioner is getting any leeway. They’re looking at any evidence pretty critically.”