Inter Partes Review (IPR)

Inter Partes Review (IPR) is a procedure before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). It allows a third party to challenge the validity of one or more claims of an issued patent based on patents and printed publications as evidence to show anticipation or obviousness. Instituted by the Leahy-Smith America Invents Act (AIA), IPR proceedings have replaced inter partes reexaminations.

Basis for Bringing an IPR

A petitioner must base their challenge on the following:

• Anticipation under Section 102 or obviousness under Section 10, and

• Prior art consisting only of patents and/or printed publications.

Who Can Petition?

Any third party who is not the patent owner and who has not previously filed a civil action challenging the patent's validity can file for an IPR against the pending patent. Counterclaims or affirmative defenses of invalidity in infringement suits before a federal court or suits for declaratory judgment of non-infringement do not prevent a defendant from petitioning for an IPR.

Timing for Filing an IPR

• For patents filed on or after March 16, 2013: A petition can be filed no earlier than nine months after issuance or after any post-grant review has concluded.

• For patents filed before March 16, 2013: Petitions can be filed any time after issuance.

With certain exceptions, a petition cannot be filed more than one year after the petitioner is served with an infringement complaint. The PTAB must decide whether to institute an IPR within six months of receiving a petition.

Criteria for Granting a Petition

The PTAB may institute an IPR if there is a reasonable likelihood that the petitioner will prevail on at least one of the challenged claims. The USPTO Director has the discretion to deny a petition, considering related proceedings involving the patent at the PTAB, in district courts, or the International Trade Commission (ITC).

How TCP Law Can Help

Understanding what is needed to bring an action before the PTAB or to protect a patent challenged before the PTAB is critical for safeguarding intellectual property. A patent attorney at TCP Law can help with the intricacies of proceedings before the PTAB.

For assistance with establishing trademark rights or with any other trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.