37 CFR 42.208: Institution of post-grant review

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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42.208    Institution of post-grant review.

  • (a) When instituting post-grant review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.
  • (b) At any time prior to institution of post-grant review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. Denial of a ground is a Board decision not to institute post-grant review on that ground.
  • (c) Sufficient grounds. Post-grant review shall not be instituted for a ground of unpatentability, unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed.
  • (d) Additional grounds. Sufficient grounds under § 42.208(c) may be a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012]