Note: This is Part 1 in a three-part series. If you’re already comfortable with how inter partes review works, you may want to skip to Part 2.
If you watched the Senate hearing last week, you heard a lot of talk about inter partes review.
Inter partes review (IPR) is an incredibly useful procedure created by the America Invents Act (AIA), and opponents of patent litigation reform are trying to gut it.
The Basics of Inter Partes Review
First, let’s start with what inter partes review actually is. After the USPTO grants a patent, there are a few ways to ask the USPTO to take another look: ex parte reexamination, inter partes review, post grant review, and covered business method review.
In each type of procedure, a third-party can ask the USPTO to determine whether a patent is invalid. The USPTO grants the petition (i.e., agrees to review the patent) based on how likely the challenge is to succeed.
Inter partes review is limited: the only grounds for filing a petition are that the patent was disclosed or suggested by an earlier patent or printed publication. There are also timing rules.
For patents filed pre-AIA (before March 17, 2013), inter partes review can be brought any time. For patents filed on or after March 17, 2013, the patent must be at least nine months old and any post grant reviews must be complete. (Post grant reviews must be filed within the first nine months after a patent issues.) And if the petitioner has been sued for infringing the patent, there’s a 1-year window in which to file the petition, which starts on the date the complaint was served.
Unlike reexamination, the AIA reviews (including inter partes review) are conducted by a panel of three Administrative Patent Judges (APJs) on the Patent Trial and Appeals Board (PTAB), not patent examiners. APJs are all patent attorneys, and they’re all experienced practitioners.
The panel will grant a petition for inter partes review if it determines that there is a reasonable likelihood that the challenged patent is invalid. If the petition is granted, the panel will have a trial and make a determination of validity. Final panel decisions can be appealed to the Federal Circuit.
There is real risk for a petitioner. Once you file an inter partes review, you can no longer argue (in court or at the PTAB) that the patent is invalid on any grounds that you raised or reasonably could have raised. So losing at the PTAB basically means your invalidity arguments are done.
In Part 2, I’ll look at the complaints that some patent owners are making about IPRs.