America Invents Act: Inter Partes Review

What is an inter partes review?

An inter partes review (“IPR”) enables a third party to challenge one or more claims in an issued patent at the United States Patent & Trademark Office (“Office”). IPR was designed to replace inter partes reexamination (“IPX”) practice. In contrast to an IPX, IPR is adjudicative and is designed to be similar to, although less expensive, more focused and quicker than, a typical validity challenge in district court litigation. While IPR proceedings will have some parallels to interferences and IPXs, the proceeding focuses on core patentability issues based only on prior art patents or printed publications that anticipate or render obvious the patent claims.

Which patents are eligible?

All patents are eligible for IPR. A petition to institute an IPR can be filed by a third party who is not precluded from filing a petition. A petitioner is precluded from petitioning from IPR it the petitioner, its real party in interest (“RPI”) or its privy (i) previously filed an IPR, post grant review, or covered business method review of a claim that resulted in a final written decision by the Board; (ii) previously filed a civil action challenging the validity of a claim of the patent - a counterclaim challenging validity does not bar IPR; or (iii) was served with a complaint alleging infringement of the patent more than one year prior to the filing date of the petition. Of note, an IPR may provide strategic advantages for an accused infringer when used in conjunction with a concurrent litigation – assuming it is less than one year since the accused infringer was served.

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