IPR Patent​

Introduced by the American Invents Act (AIA), an inter partes review, or an IPR, is a legal proceeding that challenges or reviews a patent's validity after its issuance or reissue. The trial takes place in front of the Patent Trial and Appeal Board (PTAB). Composed of administrative law judges, the PTAB rules whether a patent is valid after hearing arguments from any parties, yet no examination is involved. Parties dissatisfied with the judgment can appeal to the Federal Circuit Court. It replaces the former process, known as the inter partes re-examination.

Inter Partes Reviews and Post-Grant Reviews

Before filing for an inter partes review, it's important to understand the difference between an IPR and a post-grant review. A post-grant review is more common than an IPR. This is based solely on the fact that the only requirement is that one claim is almost certainly guaranteed to come back as unpatentable. An IPR puts the burden of proof on the person bringing the litigation. The person must prove that he or she can show patent invalidity on at least one of his or her claims to garner a hearing.

In many instances, the post-grant review serves as a precursor to the IPR. Only a judgment for the party bringing the invalidity claims can compel an IPR. However, the AIA doesn't outline whether a post-grant review is actually necessary to file an IPR.

Prior art is the difference maker when it comes to either one of these reviews. However, an IPR is limited to prior art based on printed publications and patents. A post-grant review filing is almost always successful based on any grounds on the validity of a patent.

How to File for an Inter Partes Review

For parties that want to challenge a patent's validity, the inter partes review is a viable option. However, there are many guidelines for filing for an IPR:

  • For a post-AIA patent, an IPR petition can only be filed if nine months have passed since the issuance or reissue of the patent, or if a post-grant review happens, after the post-grant review trial, whichever is later.
  • For pre-AIA patents, there is no waiting period to file for an IPR.
  • Anyone other than the patent holder can file for IPR, except any party that has brought a civil case against the patent's validity.
  • Challenges to a patent are only valid based on 35 U.S.C. §§ 102 or 103, which is only on the basis of prior art. This includes both existing patents or printed publications.

When filing a petition for an IPR, you must provide the following:

  • The $9,000 IPR fee.
  • Copies of any evidence that makes a case for invalidity.
  • A statement that shows any party of interest.
  • An explanation of the evidence.
  • An explanation of the patent's invalidity.
  • An outline of the arguments against each challenged claim.
  • Grounds for standing, or why you are asking for an IPR.
  • A list of all claims challenged.

Once you've compiled the list, the PTAB website allows you to file for an IPR proceeding through the PTAB E2E. It's important to note that a post-grant review and an IPR must be filed before the third party receives or seeks a declaratory judgment that challenges the invalidity of the patent claim. In addition, the IPR must also be filed within one year of serving the infringing party with an infringement complaint.

What to Expect in an Inter Partes Review Hearing

When an inter partes review has been submitted, the PTAB will initiate the scheduling. This mandates that the review comes to a close in at least 12 months. But it may be extended to 18 months with just cause. The schedule also declares the patent owner must find evidence contrary to the grounds of unpatentability within three months. This can include any depositions by witnesses.

The PTAB may also rule a motion that has a contingency for amending any claims to the patent. After the patent holder makes discoveries and finds evidence, the petition filer also has a three-month period to gather evidence. Sometimes this is followed by several motions before it goes to an oral proceeding.

After reviewing the evidence, petitions, and response by the patent holder, the PTAB determines if there is a reasonable chance the filing party could prove at least one of the challenged claims. If they deem there is a reasonable chance, the PTAB will narrow any issues to the key elements and rule one way or the other on the grounds of patentability revealed at the trial.

The PTAB then prepares a final written decision on the case of the challenged claims. Both parties are allowed to settle outside of the hearing unless the PTAB has already concluded the trial with a decision, but before the written decision comes out.

An estoppel effect is also in effect following the final decision. In this instance, the person filing the inter partes review cannot raise additional questions to the patentability of the claim. This extends to any proceedings that may come to light in front of the USPTO, the International Trade Commission, or during any civil suit.

Is an Inter Partes Review Unconstitutional?

In June 2017, the United States Supreme Court agreed to hear the case of Oil States v. Greene's Energy Group, et al. despite a ruling from the PTAB. This called into question the constitutionality of an inter partes review. The Supreme Court intends to answer three questions:

  • Whether an IPR violates the Constitution by removing private property rights,
  • Whether the IPR conflicts with prior rulings by the Supreme Court, and
  • Whether the broadest reasonable interpretation of patent claims is upheld during an IPR.

The Supreme Court has yet to make a decision. But this ruling will undoubtedly change an IPR if it's allowed to exist following the ruling.

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