Inter Partes Review (“IPR”) is a process by which an issued patent’s validity is challenged through an administrative process at the Patent Office.
The IPR process was created by the America Invents Act (AIA). Beginning on September 16, 2012, IPR became available against all enforceable patents. IPR is similar to the validity challenge that may be brought against a patent in federal court.
Like federal litigation, IPR provides an opportunity for expert depositions, limited discovery, and evidentiary motion practice. But rather than being heard by federal judges, IPR proceedings are held in front of a panel of Administrative Patent Law Judges in the Patent Trial and Appeals Board (PTAB). The IPR process is more condensed in time and scope than federal court validity challenges because monetary damages are not at issue, and no supplemental matters are pled.
Notably, an IPR that receives a PTAB Final Decision surrenders the challenger’s right to seek invalidity in federal court. This means if the IPR challenge is not successful, a litigant is precluded from filing a claim for invalidity in any subsequent litigation.
An overview of the IPR process follows.
Initiating an IPR
An IPR can be filed by any party against an enforceable patent.
An IPR begins with a petition
To begin the IPR process the party challenging the patent, referred to as the petitioner, files a petition with the PTAB. The petition requests review of the patent and states grounds for the Patent Office to find one or more claims of the patent invalid.
A petitioner may request to cancel one or more claims of a patent only on grounds of anticipation or obviousness, and only using patents and printed publications.
The PTAB may decline to institute the IPR
The PTAB first determines whether to institute the IPR, or decline institution. Prior to this determination by the PTAB, the patent owner is given the option of providing a preliminary response. The PTAB reviews the petition, the response, and conducts its own review.
The PTAB only grants the IPR if, after review, it finds that the information presented in the petition shows a reasonable likelihood that the petitioner will prevail.
The PTAB’s burden of proof is lower than in federal court
While the IPR process is similar to a federal court proceeding, the burden of proof in an IPR is lower. In federal court, the challenger must prevail under the clear and convincing evidence standard. This higher burden is a recognition of the deference federal court gives to the Patent Office. But the Patent Office grants little deference to the decisions of the patent examiner, and thus applies the lower evidentiary standard of preponderance of the evidence.
The result is that invalidating a patent demands a lower burden of evidence in the Patent Office than in federal court.
Timeline of IPR process
An IPR is roughly an 18-month process. The PTAB may choose to file a 6-month extension if the PTAB believes additional time is needed.
Overview of costs of an IPR
IPR proceedings are expensive. While the cost is high, Larson & Larson has experience maintaining costs below average by minimizing motions and other unnecessary filings before the PTAB.
Despite the cost, filing an IPR is the preferred method for challenging a patent outside of federal court.
- 35 U.S.C. § 311(a).