Inter-parte review (IPR)
What is Inter-parties review (IPR)
Inter-parte review (IPR) is a legal process conducted by the Patent Trial and Appeal Board (PTAB) within the United States Patent and Trademark Office (USPTO). It allows a third party, usually the defendant in a patent infringement lawsuit, to challenge the validity of one or more claims of a patent based on prior art (patents or printed publications).
Inter-parties review (IPR) Key features
Key features
Purpose: To evaluate the validity of a patent by determining whether its claims are novel and non-obvious over prior art.
Eligible Patents: Any U.S. patent can be subject to IPR, provided it is not in the 9-month Post-Grant Review (PGR) eligibility window or involved in another PGR.
Challenged Grounds: Limited to prior art grounds (35 U.S.C. §§ 102 and 103), meaning invalidity arguments must be based on:
1- Lack of novelty (newness).
2- Obviousness (combining prior art makes the patent claims evident).
Process and time-line
Filing the Petition: A petitioner (defendant) files a detailed petition identifying prior art and why the patent claims should be invalidated.
Preliminary Response: The patent owner submits a preliminary response addressing the petition.
Decision on Institution (3–6 months): PTAB decides whether to institute IPR, requiring a reasonable likelihood of invalidating one or more claims.
Trial Period (12 months, extendable by 6 months): A discovery and hearing phase involving technical arguments.
Final Decision (18 months or sooner): PTAB issues a final written decision regarding the validity of the challenged claims.
Burden of Proof:
Burden of Proof:
•The petitioner must prove invalidity by a preponderance of the evidence, a lower burden than in court litigation.
Parties Involved:
•Petitioner: The party challenging the patent.
•Patent Owner: The patent holder defending the claims.
Inter-parties review (IPR) Advantages
Advantages
Cost-Effective:
Typically costs significantly less than litigating invalidity in federal court (often 10–20% of litigation costs).
Efficient Timeline:
Resolves patent validity issues within approximately 18 months.
Expert Panel:
Adjudicated by patent judges with technical and legal expertise.
High Success Rate:
Historically, IPR often results in partial or full invalidation of challenged claims.
Leverage in Litigation:
An IPR institution decision or favorable final ruling can lead to settlements or dismissal of related infringement claims.
Inter-parties review (IPR) Disadvantages
Disadvantages
Limited Grounds:
Invalidity arguments are limited to prior art references (no challenges based on subject matter eligibility, enablement, etc.)
One-Year Bar:
Must file within one year of being served with a patent infringement complaint.
Estoppel:
After the PTAB’s final decision, the petitioner cannot raise the same invalidity arguments in other forums (e.g., court).
Challenging Institution:
PTAB can deny institution of the review if the petition is weak or redundant.
Procedure for filing an IPR
Procedure
Prior Art Search:
Conduct a thorough prior art search to identify relevant patents or printed publications.
Prepare Petition:
•File an IPR petition detailing:
•Each challenged claim.
•Specific prior art references for invalidity.
•Why the claims are obvious or not novel.
•The petition must include all supporting evidence (e.g., declarations from technical experts).
Institution Decision:
If the PTAB determines the petition establishes a reasonable likelihood of success, the IPR is instituted.
Trial Phase:
Includes expert testimonies, depositions, and a hearing before the PTAB.
Final Decision:
The PTAB either upholds the patent claims, invalidates them, or invalidates them partially
Inter-parties review - IPR filing costs
Filing Cost
USPTO Fees: •Filing fee: ~$19,000 (includes cost for reviewing up to 20 claims). •Additional claims incur extra fees.
Attorney Fees: •Depending on complexity, costs typically range from $200,000 to $500,000.
Disclaimer
IPR is often the preferred invalidation method when invalidity arguments are based on prior art, providing a faster, cost-effective alternative to court litigation. Collaborating with skilled patent attorneys ensures a strong and detailed IPR petition.
