Inter Partes Review is a new post-grant proceeding created by the AIA for challenging a patent. Inter Partes Review replaces and improves upon Inter Partes reexamination. Inter Partes Reviews are typically used by those involved in or threatened with patent litigation because the process is significantly faster and less expensive than litigation. Inter Partes Review is a particularly useful tool against trolls and patent owners with extensive continuation portfolios.
To initiate an Inter Partes Review, a petition must be filed detailing grounds of invalidity based on prior art patents and printed publications. Only third parties may petition for an Inter Partes Review and the real party in interest must be identified. The petition may be filed 9 months after grant of the patent and must be filed within one year of service of a complaint alleging infringement of the patent. An Inter Partes Review cannot be filed, however, if the petitioner previously filed a declaratory judgment of invalidity against the patent.
Once the petition has been filed, the patent owner is given the opportunity to respond that no trial should be instituted. The Patent Trial and Appeal Board (PTAB) may grant trial for one or more of the challenged claims and may confirm the validity of one or more claims. If trial is instituted, the patent owner may present evidence regarding the validity of each challenged claim, amend any challenged claim, or cancel any challenged claim. The proceeding also provides both parties with limited discovery.
There are many advantages to filing an IPR, including:
- Petitioner need only establish a reasonable likelihood that the petitioner will prevail on at least one claim;
- The burden of proof to establish invalidity is lower than in a district court, that is a preponderance of evidence standard instead of a clear and convincing standard;
- There is no presumption of validity given to the patent and claims are given their broadest reasonable interpretation;
- A fast-track decision of no more than 18 months from filing as compared to lengthy court proceedings;
- The petition is considered by experienced patent law judges and not by patent examiners as in reexaminations; and
- Significantly lower cost than litigation.
Some disadvantages of an Inter Partes Review include:
- The petition is limited to invalidity based only on prior art patents and printed publications and not on-sale bar or other grounds, such as enablement, written description, or indefiniteness; and
- Petitioner is estopped from initiating a proceeding on any ground that was raised or reasonably could have been raised during the Inter Partes Review proceeding.
When considering whether to file an Inter Partes Review, a petitioner should remember that trial may not be granted for all of the challenged claims, thus confirming the validity of some claims. That may leave the petitioner with an infringement problem depending on whether the petitioner has a viable design around option. Patent owners would be wise to conduct a thorough prior art search when filing patent applications instead of relying on the searches conducted by the patent examiners. That should reduce the chances that a potential infringer can later find invalidity prior art and petition for an Inter Partes Review of your patent.