As part of our Patents practice, we provide inter partes review (IPR) proceedings services.
Inter Partes Review (IPR) is a proceeding to challenge the validity of an issued patent. IPRs are filed with the United States Patent and Trademark Office (USPTO). An IPR can be a quicker, more cost-effective option to challenge a patent than federal court litigation may provide. We have significant experience instituting Inter Partes Review proceedings. Additionally, we have successfully defended client's patents in IPR proceedings.
Inter Partes Review to Challenge a Patent
Inter partes review (IPR) provides a means to engage in a patent challenge post-issuance outside of federal court litigation. A challenger may file an IPR petition to request to cancel one or more claims of an issued patent only on the grounds of anticipation (35 U.S.C. § 102) and/or obviousness (35 U.S.C. § 103) and based only on patents or printed publications. IPR is intended to be similar to a validity challenge that would ordinarily take place in the federal courts, and IPR proceedings are adjudicated by a panel of Administrative Patent Law Judges in the Patent and Trial Appeal Board (PTAB) at the USPTO.
Inter Partes Review in Lieu of Litigation
Patent challengers may find IPR to be an effective, efficient, lower-cost option than federal court litigation. An IPR provides a process to challenge the validity of a patent post-issuance. However, institution of an IPR proceeding is not a matter of right. Therefore, a patent holder faced with an IPR petition should consider providing defensive arguments early on. Well drafted arguments could convince the PTAB that there isn't a reasonable likelihood the challenger will prevail, thus, avoiding an IPR proceeding.
Combining our experience in patent prosecution as well as patent litigation, we serve both patent holders and patent challengers with IPR proceedings as well as with other post-issuance patent proceedings.
You can find more information about defending against IPR proceedings in our white paper, IPR Defense 2017 - Learning from Denied IPR Petitions.