Obtaining a patent for an invention can be critical for a business. It gives patent holders the right to take legal action against anyone who misuses the protected work, and it can give a company a competitive edge.
That said, challenges to a patent can arise. One example of this is an Inter Partes Review or IPR. An IPR is a trial proceeding challenging patentability. Below, we explain three critical details of IPR.
Purpose and grounds
While there are criticisms of IPR, this type of trial can be a far more attractive option for people faced with patent challenges because it is substantially faster and less expensive than litigation.
However, according to the America Invents Act (AIA), a party that does not hold the patent can only request an IPR on specific grounds detailed in the AIA. Broadly, the grounds on which a party might request IPR are on the basis of prior art, or if the patented invention was available to the public through sale, public use or printed publications.
Parties wishing to file a petition for IPR for first-inventor-to-file patents must do so either nine months after a patent is granted or upon the termination of post-grant review, whichever is later.
The patent holder can choose to file a response within three months. If it is reasonably likely that the petitioner will be successful, an IPR can be instituted. At that point, parties can expect final determination within one year.
In most cases, the Patent Trial and Appeal Board (PTAB) will institute an IPR. And of the claims that reach this point, at least 85 percent are canceled. No matter what the outcome is, however, both sides have the option to appeal the decision.
Trial proceedings like IPR can be complicated, particularly when it comes to the basis on which parties can petition PTAB for a trial and the details necessary to support both the petition and the response. To protect yourself and your legal position, it can be wise to work with an attorney as you navigate this complex process.