An inter partes review (IPR) proceeding is a legal process established by the United States Patent and Trademark Office (USPTO) to allow parties to challenge the validity of existing patent claims. It is a post-grant administrative proceeding that provides an alternative to litigation for resolving patent disputes. IPR proceedings were introduced under the America Invents Act (AIA) in 2012, and they are conducted by the Patent Trial and Appeal Board (PTAB) within the USPTO. The primary purpose of IPR is to provide a more efficient and cost-effective mechanism to review the validity of patent claims, particularly to address potential issues of patent quality and discourage abusive or overly broad patents. Key features of an inter partes review proceeding include:
Party Standing: IPR can be initiated by a party other than the patent owner, typically referred to as the petitioner. To initiate an IPR, the petitioner must demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim in the patent.
Grounds for Challenge: The petitioner can challenge the patent claims based on prior art, which includes patents, printed publications, or other public disclosures that existed before the filing date of the challenged patent. The grounds for challenge are limited to issues of novelty and obviousness.
Proceedings before the PTAB: The PTAB conducts the IPR proceedings, which involve a trial-like process. Both the petitioner and the patent owner have the opportunity to submit evidence, arguments, and expert testimony to support their positions. The PTAB reviews the evidence, hears oral arguments, and issues a final written decision regarding the patentability of the challenged claims.
Standard of Review: The standard of review in IPR proceedings is a preponderance of the evidence, meaning that the petitioner must show that it is more likely than not that the challenged claims are unpatentable. This standard is generally considered to be lower than the clear and convincing evidence standard used in district court litigation.
Estoppel: A unique aspect of IPR is the estoppel effect it imposes on the petitioner. If the PTAB issues a final written decision, the petitioner is estopped from later asserting in a civil action or other USPTO proceeding that a claim is invalid on any ground that was raised or reasonably could have been raised in the IPR.
Inter partes review proceedings have become a popular avenue for challenging patent validity due to their relative speed, cost-effectiveness, and the expertise of the PTAB. They provide a forum for resolving patent disputes and improving the quality of issued patents.