It has been almost nine months (September 16, 2012) since the USPTO began accepting petitions for inter partes review, or IPR. This is a new procedure at the Patent Office that was established by the America Invents Act to permit members of the public to request USPTO review of an issued patent. In many ways, IPRs are like the previously available inter partes reexaminations they replaced in September 2012, except for several important differences. Key differences include proceeding directly to a board of patent judges (the Board) instead of examiners, a much shorter expected time frame (an IPR is expected to last about half as long as the average reexamination) and the possibility for limited discovery.
As of April 30, 2013, 210 petitions for IPR have been filed with the USPTO. Since an IPR proceeding (referred to as a "trial") lasts about 18 months, most IPRs have not yet gone all the way through to completion. Nevertheless, there are some observations and initial statistics that are informative as to potential IPR strategies and considerations.
About 96 percent of petitions seeking inter partes review were granted in the first six months. This statistic is consistent with the percentage of requests for inter partes reexaminations that were granted each year. Unlike inter partes reexaminations, however, the number of grounds for rejection is often reduced at the outset of the IPR, i.e., the Board frequently agrees to proceed on fewer grounds of rejection than requested in the petition. Despite the high grant rate, parties considering IPR as part of a litigation strategy should ensure that they have suitable invalidity arguments on all of the claims in litigation.
Initial reports suggest that district courts are staying litigation in favor of IPR at a relatively high rate—more than 60 percent. This is likely due to many factors, including the relatively quick time frame of an IPR trial and judicial recognition of the resulting efficiencies from a stay in favor of the IPR proceeding. The high rate of litigation stays (and the accompanying cost savings or at least cost-shifting) makes consideration of IPR important to any cost-conscious litigation strategy. Litigants also need to consider the IPR estoppel provisions,i.e., the petitioner is estopped from arguing in litigation on any ground that was raised, or reasonably could have been raised, in the IPR.
Through the Looking Glass – Future IPR Procedures
The Patent Office has been fine-tuning and clarifying the IPR filing procedures over the last few months. For example, IPRs have strict style and substance requirements, which the Patent Office has been clarifying by contacting the participants directly when changes are required. This process appears to be similar to the early days of inter partes reexaminations. In inter partes reexaminations, however, the Patent Office eventually stopped providing clarification and simply started rejecting any papers that did not meet requirements. Therefore, as time goes on, it is likely to become increasingly important to work with a law firm that has experience with IPR filings and procedures, particularly since some of these style and/or substance requirements may not be expressly explained in any easily located public form.