Inter Partes Review (“IPR”) is a trial proceeding conducted at the Patent Trial and Appeal Board (“PTAB”) to review the patentability (validity) of one or more claims in a patent.  Essentially, an IPR is a Patent Office trial on whether a patent is valid, and we employ our flexible and agile litigation approach to these proceedings as well.

What is an IPR?

IPR proceedings are relatively new, and are only available for challenges to novelty and non-obviousness based on patents and printed publications.  An IPR begins with a third party challenger (a person who is not the owner of the patent) filing a petition, which sets forth all of the claims that party contends are invalid, the specific bases for the challenger’s contentions, and all supporting evidence. The patent owner may file a preliminary response to the petition. 

An IPR may be instituted upon a showing that there is a reasonable likelihood that the challenger would prevail with respect to at least one claim challenged.  Once instituted, the parties may take discovery, typically from at least experts and inventors, to support their cases prior to oral arguments before the PTAB. 

How much does an IPR cost?

The government fees associated with an IPR are as follows:

  • $15,500 ‐ IPR request fee (up to 20 claims);
  • $15,000 ‐ IPR post‐institution fee (up to 15 claims);
  • $300/claim ‐ IPR request fee for each claim over 20; and
  • $600/claim ‐ IPR post‐institution fee for each claim over 15.

Potential Advantages over Federal Court Litigation

An IPR can offer advantages over challenging a patent in Federal court.  Most notably, in an IPR proceeding, the challenged patent is not presumed valid and the claim terms are given their broadest reasonable interpretation, unlike in a Federal court validity dispute.  In addition, the PTAB seeks to resolve IPRs within about 18 months, whereas Federal court disputes may continue for several years.  Discovery in an IPR is also significantly more limited in scope than in Federal court litigation, resulting in significant cost savings.  There is, however, one significant potential disadvantage for patent challengers who pursue an IPR— in a later Federal Court proceeding, the patent challenger in an IPR will be estopped from asserting any ground that it raised or could have raised in the earlier IPR. 

Comparison to Post-Grant Review

An IPR is similar to a Post-Grant Review (“PGR”), with a few notable differences:

  • A PGR is limited to challenging patents filed on or after March 16, 2013, while any patent may be challenged in an IPR;
  • A PGR is limited to challenging patents only within the first nine months after their issuance, while an IPR is available for challenging patents after this initial window; and
  • A PGR is not limited to novelty and non-obviousness challenges, and it may be based on prior art other than patents and printed publications.

If someone has challenged your patent in an IPR proceeding, of if you would like to explore the possibility of challenging the validity of another’s patent (either in Federal court or before the PTAB), we can help find the solution that is best for you.