Inter Partes Review, Developments and Procedures

Inter partes review (IPR) is a new USPTO procedure. It allows a challenge to patents by a party who is not the patent owner and has not previously filed a civil action challenging the validity of a claim. The vast majority of challenged patent claims have been rendered unpatentable. This article answers questions regarding the IPR from the perspective of both the petitioner (challenger) and the patent owner.

To date, the Patent Trial & Appeal Board has invalidated nearly 80 percent of challenged patent claims, but the filing of an IPR petition presents risks. The most significant concern is statutory estoppel. The petitioner is prevented from raising invalidity defenses in another action (e.g., a district court infringement action) based on the subject prior art, and all other patents or printed publication prior art that could have been presented. Given the impact of an estoppel, one must carefully assess the likelihood of success and the availability of other defenses.

The patent owner has the right to file a motion to amend its claims. Because the claims are not subject to typical patent office examination, the patent owner has the burden of proving that its amended claims are patentable. This has proven to be a nearly insurmountable barrier, as virtually all such motions have been denied.

The board is experienced and adept at limiting grounds for trial, and discovery is limited. Resolution of most cases occurs within one year of institution of the proceeding.