An Inter Partes Review (IPR) is a relatively new administrative proceeding for patents. The IPR is conducted before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), and is a proceeding by which a third party can challenge the patentability of patent claims.
An IPR can be beneficial if there is an issued patent that prevents you from freely operating your business. In addition, if you have been sued for patent infringement, filing an IPR should be considered. Depending on whether the IPR is filed early enough in the litigation, the district court may stay the litigation pending the PTAB's resolution of the issue of patentability.
An IPR petition can rely only on written prior art, such as patents, published patent applications, or printed publications, and may be filed nine months after the grant of a patent. In addition, if the petitioner has been named as a defendant in a district court litigation alleging patent infringement, there is a one-year deadline from being served with the summons to file an IPR challenging the patentability of the asserted patent.
There are a number of advantages to filing an IPR at the PTAB instead of challenging the validity of the patent in district court.
- The IPR proceeding is much less expensive than a civil litigation, primarily because the timeline is shorter and discovery is limited.
- The IPR proceeding is adjudicated by a panel of three Administrative Patent Judges (APJs) who are often better equipped to understand the technical issues than a district court judge or jury.
- Perhaps most important, because there is no presumption of validity of the patent being challenged in an IPR, the standard for demonstrating unpatentability before the PTAB is by the "preponderance of the evidence" standard rather than the higher "clear and convincing" standard used in district court.
Consequently, filing an IPR can be an important tool to deal with a patent of concern. If you believe an IPR may help your business or if you have any questions, please contact us.
Find our recent IPR representations on the PTAB E2E by
searching the AIA Review Numbers below:
IPR2020-01534
IPR2020-01533
IPR2020-01532
IPR2019-00451
IPR2019-00450
IPR2019-00449
IPR2018-01730
IPR2018-01179
IPR2018-01178
IPR2018-00295
IPR2017-01949
IPR2017-00748
IPR2017-00747
IPR2017-00746
IPR2017-00745
IPR2017-00200
Originally Published 14 January 2022
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.