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Inter Partes Review (IPR)

May 15, 2017

An Inter Partes Review (IPR) is a trial proceeding before the US Patent Trial and Appeal Board (PTAB) for challenging the patentability of any subject matter claimed in an issued patent. Any party other than the patent owner can file an IPR petition. The only permissible grounds for challenging a patent in an IPR proceeding are anticipation and obviousness based on prior art patents or printed publications.

A challenger may initiate an IPR proceeding by IPR petition to the PTAB asserting the unpatentability of one or more claims of a challenged patent.

Within three months of the challenger’s IPR petition submission, the patent owner may submit a preliminary response that may include a declaration from an expert. Upon review of the petition and the preliminary response, and within six months of the filing date the IPR petition was accorded, the PTAB will determine whether the challenger has established a reasonable likelihood that at least one claim is unpatentable.

If the PTAB institutes a trial, it will issue a scheduling order to generally complete the proceeding within 12 months of the institution date. The PTAB ultimately issues a final written decision on the patentability of the challenged claims. Either party can appeal the final decision to the US Court of Appeals for the Federal Circuit.

IPRs provide several advantages to challengers as compared to litigation. An IPR proceeding is generally completed in 18 months or less from filing, whereas litigation on average takes at least two years to trial. In addition, a broadest claim construction standard and lower burden of proof for unpatentability are used in IPR proceedings versus litigation. These advantages lead to lower costs and a higher chance of success for challengers.

The downside of challenging patents via IPR is that if challengers do not prevail, they may be estopped from raising grounds that were raised or could have reasonably been raised in the IPR in subsequent proceedings before the US Patent and Trademark Office, federal courts, and the International Trade Commission.

IPRs offer several benefits for challengers compared to other proceedings used to invalidate patents:

  • IPR proceedings take less time than litigation to reach a final disposition, usually 18 months or less from filing the petition.

  • IPR proceedings are substantially less expensive than litigation.

  • IPR petitions may be filed at any time during the life of a patent, except for the nine months immediately following the issue date of a post-America Invents Act appeal.

  • The petitioner may request a stay of any concurrent litigation in district court after filing an IPR petition, which is often granted.

  • The standard of proof for invalidating a patent in an IPR proceeding is a “preponderance of the evidence” (~51%) rather than “clear and convincing evidence” (>70%), thereby allowing the challenger a greater likelihood of success.

IPR proceedings became available in 2013 with the enactment of the America Invents Act.