To Do List: Filing an IPR

Editor: Erika Harmon Arner

Inter Partes Review (IPR) is a trial proceeding before the Patent Trial and Appeal Board (PTAB), providing for the review of patentability of one or more claims of a patent following the issuance of patent or a reissue patent. IPR became available on September 16, 2012, replacing the former inter partes reexamination. Some things to consider before filing a petition for IPR:

checkmarkUnderstand the Timing

For a post-AIA patent, a petition for IPR cannot be filed until the later of either: (1) nine months after the grant of the patent or issuance of a reissue patent; or (2) if a post-grant review (PGR) is instituted, after the termination of the PGR proceeding. For pre-AIA patents, there is no nine-month waiting period.

checkmarkKnow Who Can File

Any party other than the patent owner may file a petition for IPR, with the exception that one who has brought a civil suit challenging the validity of the patent is barred from seeking review.

checkmarkChoose Your Grounds of Challenge

The only permissible grounds of challenge are those that can be raised under 35 U.S.C. §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

checkmarkConsider Estoppel Effects

A petitioner (or any real parties in interest or privies) is barred from requesting or maintaining a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the IPR. Further, a petitioner (or any real parties in interest or privies) may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that was raised or reasonably could have been raised in the IPR proceeding. See, e.g., AIA § 6; 35 U.S.C. § 315(e).

checkmarkRequired Parts of Petition

A petition for IPR must contain the following information:

  • The grounds for standing;
  • An identification of all claims challenged and all grounds on which the challenge to each claim is based;
  • A claim construction for each challenged claim;
  • A specific explanation of the grounds for unpatentability;
  • A specific explanation of the relevance of evidence relied upon;
  • An identification of all real parties in interest;
  • Copies of evidence relied upon; and
  • The required fee.

checkmarkKnow the Rules

In addition to 35 U.S.C. §§ 311-319, several different rules packages govern IPR proceedings. On August 14, 2012, the PTO promulgated Final Rules which implement procedures for IPR:

The PTO has also promulgated Final Rules governing administrative trials before the PTAB and has published a corresponding Trial Practice Guide:

checkmarkLearn from Examples and Tips

The PTAB website includes a link to the Patent Review Processing System (PRPS), the electronic filing system for IPR proceedings. Here, nearly all of the documents filed in these proceedings are available to the public.

The PTO has supplied the following answers to Frequently Asked Questions regarding IPR:

Hon. Michael Tierney, Lead Judge of the PTAB, has also provided the following “Tips for Filing Petitions and Making Successful Arguments Before the Patent Trial and Appeal Board”:

 

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