What is an Inter Partes Review (IPR)?

Inter partes review (IPR) is a proceeding before the Patent and Trial Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) in which a third party alleges the invalidity of one or more claims of an issued patent. The Leahy-Smith America Invents Act (AIA) instituted IPR proceedings to replace inter partes reexaminations.

What is the basis for bringing an Inter Partes Review?

A petitioner for an IPR must allege the invalidity of one or more claims in an issued patent based only on anticipation under section 102 or obviousness under section 103 and based only on prior art consisting of patents or printed publications.

Who may petition for an Inter Partes Review?

A petition for an IPR may be filed by any third party who is not the patent owner at issue and who, before the date on which the petition is filed, has not filed a civil action challenging the validity of a patent claim. However, a counterclaim or affirmative defense of invalidity in a civil suit for infringement does not bar the defendant from petitioning for an IPR on the validity of the patent claims. Similarly, a suit for declaratory judgment of non-infringement of the patent claims also does not bar the defendant from petitioning for an IPR.

When may a petition for Inter Partes Review be filed?

For a patent having an effective filing date on or after March 16, 2013, an IPR petition may be filed on the later of (1) nine months after the patent's issue or reissue date or (2) the termination of any post-grant review of the patent. For patents having an effective date before March 16, 2013, an IPR petition may be filed anytime after the patent's issue date.

The PTAB may not institute an IPR based on a petition filed more than one year after the petitioner or real party in interest is served with a complaint alleging infringement of the patent challenged in the petition. This one-year bar does not apply if the infringement complaint was filed more than one year before the IPR petition, but the petitioner was not served with the complaint.

Once a petition has been filed, the PTAB is statutorily obligated to decide whether or not to institute an IPR within six months of a petition's filing date.

On what basis is a petition for Inter Partes Review granted?

A petition for an IPR may be granted when there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. However, the language of Section 314(a) also provides the Director of the USPTO with discretion to deny a petition. In applying that discretion, the Consolidated Trial and Practice Guide confirms that the PTAB may consider "events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC" as part of its institution decision.

Do you need to take action before the PTAB?

To discuss how to bring an action before the PTAB or protect a patent contested before the PTAB, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.