
Inter Partes Review (IPR) is a type of post-grant proceeding before the Patent Trial and Appeals Board (PTAB) of the United States Patent and Trademark Office (USPTO). It allows a third party to challenge the validity of one or more claims in an already-issued U.S. patent. IPR is a crucial tool for ensuring the quality and validity of patents so that that only truly innovative and deserving inventions receive legal protection.
Who Can File an IPR Petition?
Almost anyone can file an IPR petition unless they have already challenged the patent’s validity in a civil lawsuit or are the patent owners themselves.
Advantages to the Petitioner
- No Presumption of Validity: Unlike patent litigation in district courts, in an IPR proceeding, there is no presumption that the patent is valid. This means that the patent owner does not benefit from a presumption of validity, which is a significant advantage for the challenger.
- Lower Evidentiary Burden: Because there is no presumption of validity, Petitioners need only prove that the challenged patent claims are not patentable by a preponderance of the evidence as opposed to the higher clear and convincing evidence standard in district court proceedings. This lower evidentiary burden simplifies the process for challengers.
- Lower Cost: Legal representation fees in an IPR are often significantly lower than a full-blown district court case. This financial advantage makes IPR an attractive option for those seeking to efficiently challenge a patent’s validity.
- Faster Resolution: The PTAB must reach a final decision in IPR proceedings within 12 months of an institution decision, typically resulting in a quicker resolution than district court proceedings. This rapid process is beneficial for both petitioners and patent owners.
- Two Battlegrounds: With proper counsel, Petitioners can leverage the PTAB and district court systems to challenge the patent in different ways. This dual approach can increase the chances of successfully invalidating questionable patents.
- Settlement Leverage: The risk of losing a patent in an instituted IPR can provide leverage in Alternative Dispute Resolution (ADR) proceedings. This strategic advantage can lead to favorable outcomes for the Petitioner.
Disadvantages to the Petitioner
- Scope Limitation: IPRs are limited in scope. If the primary evidence of patent invalidity relies on factors like prior products, indefiniteness, non-enablement, or inequitable conduct, you may need broader district court proceedings. This limitation can be a disadvantage for challengers with specific grounds for invalidity.
- IPR Estoppel: Once the PTAB issues a final written decision, petitioners are precluded from raising any grounds of invalidity in district court that were raised or could have been raised in the IPR. This estoppel can restrict the petitioner’s options in future legal proceedings. Understanding and managing this potential limitation, with the assistance of experienced counsel, is crucial.
Procedural Steps and Timeline for IPR
- Petition: An IPR is initiated with the filing of a petition that must File the IPR petition, adhere to specific deadlines and content requirements. A significant deadline is that an IPR must be filed within 12 months of the filing of a district court lawsuit. Most significantly, the petition sets forth the challenge to the patent’s validity.
- Patent Owner’s Preliminary Response: The patent owner can file a preliminary response within three months of the filing of the petition with the goal of persuading the PTAB not to institute the IPR.
- Institution of IPR: The PTAB decides whether to institute the IPR based on the petitioner’s grounds and arguments. This decision sets the stage for the entire subsequent proceeding.
- Patent Owner’s Motion to Amend: After IPR institution, patent owners can seek to amend the challenged claims. This step can impact the direction of the IPR and the potential outcomes. When can the motion be filed?
- Patent Owner’s Response: If the PTAB institutes the IPR, the patent owner can respond to the petition, focusing on why they should ultimately prevail despite the institution. The response is a chance for the patent owner to defend their intellectual property.
- Petitioner’s Reply: The petitioner can file a reply to the patent owner’s response within … The reply is limited to rebutting the response’s arguments. This back-and-forth exchange allows both parties to refine their positions for the PTAB.
- Oral Argument: Parties can request oral arguments before the PTAB administrative judges. This step provides an opportunity for direct interaction and clarification.
Discovery, Depositions, and Motion Practice. Depositions and motion practice play a role in the process, including objections to evidence and motions to exclude. These elements contribute to the thorough examination of the patent’s validity.
Intricacies in an IPR proceeding require experienced legal representation. BHW attorneys have extensive experience handling various aspects of IPR proceedings, including petitions, patent owner responses, expert declarations, depositions, replies, evidentiary disputes, and oral arguments.
Should You Petition for IPR?
The decision to file an IPR petition is complex and should be made case by case. Factors like the strength of prior art, likelihood of success, and costs play crucial roles in this strategic choice. If you are considering an IPR petition, consult an experienced patent attorney to assess your options.
IPR remains valuable in challenging patent validity, promoting innovation, and protecting intellectual property rights. Understanding its advantages, disadvantages, and procedural intricacies is key to making informed decisions.
Mr. Barceló represents high-technology companies in various intellectual property matters, including prosecution, litigation, transactions, and counseling involving patents, trademarks, copyrights, domain names, and trade secrets.
Mr. Barceló is a registered patent attorney out of the firm’s Newport Beach office in Orange County, California located at:
2901 West Coast Hwy
Suite 200 Newport Beach, CA 92663
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