Inter partes review (IPR) is a trial proceeding conducted before the Patent Trial and Appeal Board’s (PTAB) the United States Patent and Trademark Office (USPTO) board of review. The purpose is to determine the validity of a US patent and the viability of one or more petitions involving a patent under §§ 102 or 103.
- § 102 involves patentability and novelty. It determines whether a patented invention described in a print publication is allowed for public use, on sale, or is available before the claimed invention’s effective filing date.
- § 103 involves a subject matter copyright identified in §§ 102 that includes compilations and derivative works. However, the protections in the preexisting copyright do not extend to work used unlawfully, so the copyright in compilation only contains original material by the author of the new work.
Initiating a review
There is a process for a third party to initiate the first-inventor-to-file patents review. The deadline is the later of:
- It can occur at any time during the patent, except nine months after the patent was granted or the reissue of the patent, but no more than a year after being served by a complaint.
- The termination of the post-grant review if one was initiated.
The complete petition must include a filing fee and must be served on the patent owner.
The review hearing
The petition must establish that the petitioner’s request has a reasonable chance (better than 50-50) of winning at least one of the claims challenged in the request. If they do not prevail, they are barred from again raising grounds that were raised or could have reasonably been raised in the IPR in subsequent proceedings before the USPTO, federal courts, and the US International Trade Commission. The inter partes review steps involve:
- The board accepts the petition request, and the review begins.
- The patent owner can pre-file a response to the petition for any grounds not previously denied and has 12 weeks to do so.
- The petitioner can then reply within 12 weeks to the patent owner’s response.
- The owner subsequently has the option for a motion to amend after receiving guidance from the board.
- There will be a 10-week period involving motions to exclude.
- An oral hearing will follow these actions.
- The final written determination should be no more than one year after the post-grant review begins, but it can be extended six more months if there is good cause.
This IPR process began in 2012 as part of the enactment of the America Invents Act. It offers the benefit of being less expensive than litigation, but IPRs are often filed in parallel with ongoing patent litigation in federal court. Those with questions about an IPR can speak to an intellectual property attorney who handles these matters.