What is an Inter Partes Review (IPR)?

An Inter Partes Review (IPR) is a post-grant procedure conducted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). It allows a third party (usually a challenger) to request a review of the validity of a patent after it has been granted.

IPRs are typically used to challenge the patentability of a patent based on prior art (such as prior patents, publications, or other materials) that the challenger believes was not considered during the original examination.

Purpose of IPR

The purpose of an IPR is to provide an efficient and cost-effective alternative to district court litigation for challenging the validity of patents. It is designed to resolve patent disputes in a more streamlined and quicker process.

• Faster resolution: IPRs are typically concluded within 12-18 months, much faster than patent litigation, which can take several years.
• Cost-effective: IPRs are generally less expensive than full-scale court trials.
• Expert review: The PTAB judges who review IPR petitions are technical experts with experience in patent law.

   

How Does an IPR Work?

1. Filing the Petition:

• A third party (e.g., a competitor) can file an IPR petition challenging a patent’s validity.
• The petitioner must identify the specific grounds for invalidity (e.g., prior art references) and show that there is a reasonable likelihood that at least one of the claims of the patent is unpatentable.

2. Decision to Institute:

• After reviewing the petition, the PTAB will decide whether to institute the IPR. This decision typically occurs within three months of filing.
• The PTAB may decide to deny the petition if it finds the challenge is not strong enough or if the evidence does not meet the required standards.

3. Trial Phase:

• If the IPR is instituted, the case proceeds to the trial phase where both the petitioner and the patent owner present their arguments and evidence.
• The PTAB will review the claims in question, including the submitted prior art, and may hold oral hearings.

4. Final Written Decision:

• After the trial phase, the PTAB will issue a final written decision, typically within 12 months of the institution of the review.
• The PTAB can either uphold the patent, invalidate certain claims, or modify the claims based on the findings.

5. Appeal:

• Either party can appeal the PTAB’s decision to the United States Court of Appeals for the Federal Circuit (CAFC).

Grounds for IPR

A challenger can request an IPR based on prior art that was not considered during the initial examination of the patent. The two main grounds for IPR are:

Section 102 (Novelty):

• The patent claim is not new and has been anticipated by prior art.

Section 103 (Obviousness):

• The patent claim is obvious in light of the prior art, meaning someone skilled in the relevant field could have easily modified or combined existing inventions to create the patented invention.

   

Benefits of IPR

Cost-Effective and Quicker Resolution:

• IPRs are often more affordable and faster than district court patent litigation, making them a popular option for patent challengers.

Expert Decision-Making:

• The PTAB judges are experts in patent law and technology, providing a more specialized review than a district court judge may offer.

Less Burden on Evidence:

• IPRs focus on the written record (such as patents and printed publications), unlike district court cases that can involve more discovery and witness testimony.

Potential to Cancel Patent Claims:

• If successful, IPRs can invalidate one or more claims of a patent, which can weaken the patent holder’s rights or lead to licensing or settlement.

Limitations of IPR

No New Arguments:

• IPRs are limited to the grounds and evidence presented in the initial petition. New arguments or evidence cannot be introduced during the trial phase.

Patent Eligibility Limitations:

• IPR cannot be used to challenge patents that cover certain types of inventions like design patents or biotech inventions (e.g., claims directed to products of nature).

Finality of PTAB Decisions:

• Once the PTAB issues a final written decision, it is subject to appeal, but the decision is typically final unless reversed by the Federal Circuit or higher courts.

   

Key Takeaways

• Inter Partes Review (IPR) is a post-grant challenge procedure that allows third parties to challenge the validity of a patent before the Patent Trial and Appeal Board (PTAB).
• It is designed to be a faster and cheaper alternative to litigation.
• IPR is based on prior art and can invalidate a patent if the claims are found to be novel or non-obvious.
• The PTAB’s final decision can be appealed to the Federal Circuit.

IPRs have become a crucial tool for both patent challengers and patent owners, allowing them to resolve patent disputes without resorting to lengthy court battles.