An inter partes review (IPR) proceeding is a contested procedure at the United States Patent Trial and Appeal Board (PTAB) that challenges the patentability of granted patents. Inter partes review proceedings were enacted under the America Invents Act (AIA), which had an effective date of September 16, 2012.
Inter partes review proceedings apply to all patents issuing from applications subject to first-inventor-to-file (pre AIA) as well as those patents that issued after the AIA under the first-to-invent standard.
Inter partes review proceedings are initiated by a petitioner who files a petition to request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 25 U.S.C. § 102 or 103. The only basis to bring an inter partes review petition is with prior art consisting of patents or printed publications.
The AIA limits the eligibility of those who may file for an inter partes review. A party who is not the patent owner and has not previously filed a civil action challenging the vitality of a claim of the patent may petition for an inter partes review of the patent. Unlike an ex parte reexamination, the patent owner may not file a petition for inter partes review of its own patent.
Once an inter partes review petition is filed, the patent owner has an opportunity to file a preliminary response. The preliminary response may articulate reasons why no inter partes review should be instituted. A patent owner may elect not to file a preliminary response.
The PTAB will only institute an inter partes review proceeding if the petitioner demonstrates there is a reasonable likelihood that he/she would prevail as to at least one of the claims challenged. A party may request a rehearing of the PTAB’s decision denying institution of the inter partes review, but a party may not appeal the Board’s decision whether to institute the proceeding.
Instituted inter partes review proceedings result in a trial before the PTAB. The patent owner may file a response to the petition, may submit evidence, and may file a motion to amend the challenged patent claims. The petitioner may file a reply.
Discovery is permitted during an inter partes review proceeding. That discovery, however, is limited to depositions of witnesses submitting affidavits or declarations and those other matters that are necessary in the interests of justice.
An oral hearing is permitted at the request of either party.
The inter partes review process is statutorily mandated to be completed within one year of institution, except that the time may be extended up to six months for good cause. The PTAB will issue a final written decision that addresses the patentability of any challenged patent claim and any new claim added via amendment during the proceeding.
A party may request rehearing of a final written decision. After the Board issues the final written decision, the parties may appeal directly to the Federal Circuit.