1. Inter Partes Review
2. How to Improve the Favor of an IPR
3. Validity of Action Is in the Hands of the District Court
4. Considering Prejudice
5. Types of Defenses to Be Used by the Accused

IPR litigation involves intellectual property rights which relates to products that were developed in part to intellectual efforts. These products are normally created thanks to intellectual efforts regarding fine arts or applied art, or a combination of both. Most times, IPR rights relate to designs and trade secrets as well as trademarks, service marks, patents, and copyrights. These rights prohibit such aspects of a product to be passed off to another person or company.

Because intellectual property is so highly valued all across the world, and in many areas, it is considered to be sacred, trademarks and copyrights and other forms of intellectual property are often viewed as tangible in relation to their propriety. There used to be many traditional laws relating to intellectual property, but new laws have recently replaced them; this applies not only in India but various places all across the world.

Inter Partes Review

IPR also stands for inter partes review, which is a process that can be used to cancel claims of enforcement of patents in the United States. When a patent is granted under the first-inventor-to-file law, which is a new law, it means an IPR cannot be filed unless a period of nine months has passed since the post-grant review process has ended. If there is a post-grant review that has recently been instituted, this proceeding must conclude as well before the IPR can be filed.

It is extremely important to understand that there are many comprehensive deadlines incorporated into IPR proceedings. These deadlines must be met in order for the filer to receive an official petition for an IPR. More so, these deadlines have to be met in order for the appeals process to continue.

The value of an IPR lies in the fact that it can be used to challenge patent claims, which is especially beneficial when an entity has been sued for some type of patent infringement. But the IPR petition must be filed within 12 months of the complaint. This deadline starts when the entity receives the complaint, not from the actual date it was filed.

How to Improve the Favor of an IPR

There are steps you can take to improve the favor of IPR. First, you should choose to wait until the actual IPR has been instituted until you take any action. You may want to stay the related litigation quickly as soon as the complaint is made, but this can actually impact you negatively.

It has been proven time and time again that many courts look favorably upon stay motions if they are filed after the IPR has been initiated, which can take up to six months. Yes, as a defendant, you want to file your IPR petition quite soon after the complaint is filed, but you will want to wait until the USPTO acts before you actually request a stay. In doing this, you are able to present a strong case for stay.

Validity of Action Is in the Hands of the District Court

And even when the USPTO institutes an IPR and cancels the challenged claims, the validity of this action still remains in the hands of the district court. Any unchallenged claims could still require a trial if deemed necessary by the district court. When an IPR challenges only some of a patent owners patents, the claims asserted are not likely to stay the litigation. And even when the USPTO institutes an IPR and cancels the challenged claims, the validity of this action still remains in the hands of the district court. Any unchallenged claims could still require a trial if deemed necessary by the district court.

Considering Prejudice

It's also not uncommon for courts to determine whether or not issuing a stay will cause any type of prejudice on the patent owner. A court is very unlikely to grant a stay if the claim is brought forth with prejudice, such as by a direct competitor of the patent owner. This is why it is always a good idea for the moving party to show the court that there is no competition between them and the patent owner.

Types of Defenses to Be Used by the Accused

If you are being accused of infringement, it is in your best interest to use any and all types of conceivable defense. There is a long list of possible defenses you can, including:

  • Various validity defenses
  • Estoppel
  • Non-infringement
  • Lack of novelty
  • Waiver
  • Laches
  • Inadequate written description

If you need help with IPR litigation, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.