There has been much discussion about inter partes review among patent professionals recently. The legal complexities can quickly multiply. The following are what we consider to be some of the very basic points that business development executives searching for patents to license need to understand about this process:
What is Inter Partes Review (IPR)? Inter partes review is a patent challenge process that can take place soon after a patent is granted. It is an administrative process (as opposed to the judicial process of patent litigation). Enacted in the America Invents Act legislation, the proceeding has been available for two years but has become very popular in recent months.
How Does IPR Differ From Litigation in Federal Court? IPR proceedings occur before a panel of administrative law judges at the Patent Trial and Appeal Board. These judges have technical/scientific backgrounds and patent litigation or prior administrative challenge proceeding experience. IPR costs a fraction of patent litigation and likewise occurs in a fraction of the time. The discovery process in IPR is limited, at least as compared to litigation, but depositions may still be taken of any witnesses submitting affidavits. Unlike in federal court litigation, patents are not presumed to be valid in IPR
What is the Basis for IPR Challenges? IPR is based on prior art – the challenging party has found a publication or prior patent that was not revealed in the examination process – and on an allegation that the patent is obvious or not novel.
Can a Patent Owner Amend a Patent in the Face of an IPR Challenge? The short answer is ‘yes’ – a patent owner can supply additional information that was not present during the initial patent examination. She can also make an application to have the patent “re-issued” with new or additional claims.
A year ago former Federal Circuit Chief Judge Randall Rader asserted that IPR was a “death squad” for patents. Rhetoric aside, it is too early to know the full impact that IPR will have, but clearly the impact is already being felt. From the start of this new proceeding until September, 2014 (roughly 2 years) there have been nearly 2,000 IPR petitions. See here.
For a deep dive into inter partes review, explore Fish & Richardson’s comprehensive website on the subject. See here.
USPTO Inter Partes Review FAQs. See here.
UPDATE: An illuminating recent Robins Kaplan law firm blog post says that, for patentees, the key to surviving an IPR is having good experts. See here.
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