Inter partes review is a trial-like process before the Patent Trial and Appeal Board (PTAB). The U.S. Patent and Trademark Office (USPTO) developed the process in 2011 to replace a string of less efficient processes for challenging patents. A person or company who wants to patent an invention files a patent application, wherein they make claims about the invention and why it should receive a patent. IPR allows a third party (not the patent owner) to challenge the patent claim before the PTAB. The purpose for the petitioner is to show that the claimed invention is unpatentable.
What are the rules for IPR?
Petitioners in IPR may only challenge patentability under sections 102 or 103 of the U.S. Code. Section 102 describes the conditions a claimed invention must meet to be patentable. It must meet the novelty test and not be based on “prior art.” Section 103 states that even if the patent claim is not identical to prior art, the differences must be great enough that the invention would not be obvious from the prior art.
When are they filed?
A challenger can file for IPR only after either nine months after the patent is granted; or the date of the termination of a post-grant review, if one is filed. The petition must detail the claim and all evidence against the claim, including all supporting documents. The Director then gives the patent owner a time frame to respond to the petition. The PTAB issues a decision within one year of the review.
Who petitions for IPR?
Individuals or companies can petition for IPR for any claim before the USPTO. Some petitioners bring a claim to defend their own patents if they feel the new claim is too similar to something they created. Other petitioners may use the IPR process to stifle a competitor’s claims, alleging they are overly broad.
Pro’s and cons
The initial purpose of IPR was to streamline the patent process and give people a way to challenge a patent that is overly broad or lacks novelty. This should encourage patent applicants to draft their claims narrowly, when the applicant may want to claim broad protections of ideas for future use.
Critics of IPR do exist. Some point out that the law uses a different standard for review than for initial claim construction. In addition, some argue that evidence exists of stock price manipulation, but that has been limited. The pharmaceutical industry has the most complaints regarding the IPR process, as the companies worry about stifling investment in new drugs.
Whether you approve of this process or not, it seems to be here to stay for the foreseeable future. Federal Circuit courts have routinely upheld the PTAB’s decisions, which bodes well for its success.