Inter partes review (“IPR”) is one of the several
tools established under the AIA for an issued patent to be challenged through
an administrative process administered by USPTO. The rationale for using an IPR process rather
than a court proceeding is the perceived cost saving even though I personally
do not think the process is as inexpensive as the proponents of the AIA have
hoped.
Who can initiate an IPR on a patent?
Anyone (other than the patent owner) can initiate an IPR
request to cancel one or more claims of an issued patent as unpatentable. The ground for unpatentability must be the lack
of novelty (under 35 U.S.C. § 102) or obviousness (under 35 U.S.C. §103). The prior art cited for supporting an IPR
request can only be patents or printed publications. This means that you cannot challenge the
patentability through an IPR process based on an on-sale bar.
What
kind of patent is subject to an IPR?
You can use IPR process to challenge the patentability of
any patent. For example, you could use
the IPR process to challenge your competitor’s patent. Also, if you are sued for infringement of a
patent, you could initiate an IPR process trying to knock the patent out before
litigating your case before a court.
When
can you request an IPR on a patent?
You can request an IPR of an issued patent after 9 months
following issuance. However, if the
patent is under PGR process, you must wait until the termination of the PGR
process before you can file your IPR request.
Also, if you are served with a compliant alleging infringement of the
patent, you have one year to request an IPR on the patent. After one year, you can no longer request an
IPR on the patent. This limitation does not
apply to the situation that you are requested to join the litigation.
How
do you start an IPR process?
To start an IPR process, you must file a petition under 35
U.S.C. § 311. The petition must meet the
following conditions for the USPTO to consider your IPR request.
First, you must pay a request fee of $9,000.00. This amount will cover your request for the
USPTO to review 20 claims. If you want
to challenge more claims (in excess of 20 claims), you need to pay $200 per
additional claim.
Second, you must identify all real
parties in interest. You cannot be a
front for someone else to challenge a patent.
Third, you must identify, in writing
and with particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence that supports the grounds
for the challenge to each claim. The
evidence may include copies of patents and printed publications that you rely
upon in support of the your request. If
you rely on expert opinions, you need to provide affidavits or declarations of
supporting evidence and opinions.
Fourth, to put the patent owner on
notice that someone is challenging his patent, you must provide copies of the
documents required under paragraphs (2), (3), and (4) of 35 U.S.C. § 312(a) to
the patent owner or his representative.
Ok,
I’ve filed an IPR request on my competitor’s patent. Then what?
After you filed your IPR request with the USPTO, UPSTO will
notify the patent owner that an IPR request has been filed challenging his
patent. The patent owner has the right
to file a preliminary response within 3 months of the filing of your
request. In the response, the patent
owner will explain to the USPTO why no IPR should be instituted by pointing to
the failure of you meeting the above-mentioned requirements. In this process, you as the IPR petitioner
have the burden of proving a proposition of unpatentability by a preponderance
of the evidence.
The USPTO will determine whether to
institute an IPR within three months after: (1) receiving a preliminary
response to the IRP petition; or (2) if no such preliminary response is filed,
the last date on which such response may be filed. The standard that the USPTO
uses to make the decision is the
“reasonable likelihood that the petitioner will prevail” with respect to
at least one of the patent claims. It is
currently understood that the “reasonable likelihood” standard means satisfying
a prima facie case of unpatentability.
The USPTO will notify the petitioner
and patent owner, in writing, of the Office’s determination of whether to
institute IPR, and will make the notice available to the public as soon as is
practicable. The notice will include the date on which the review will
start.
If the USPTO grants your request, you
will need to pay an additional $14,000 fee for the USPTO to institute the
IPR. This amount will cover 15 claims
that will be reviewed by the USPTO. If
you’ve challenged more than 15 claims, you will need to pay $400 for each additional
claim.
In addition, if an IPR is instituted,
any civil suit filed later or on the same day will be automatically stayed (with
some exceptions).
What’s happening during the IPR Proceeding?
During an IPR proceeding, the patent owner may file one
motion to amend the patent by: (A) canceling any challenged patent claim; and/or
(B) for each challenged claim, proposing a reasonable number of substitute
claims. Additional motions to amend may only
be permitted upon the joint request of the IPR requester (the petitioner) and
the patent owner to advance materially the settlement of a proceeding.
The patent owner is not allowed to enlarge the scope of the claims of the
patent or introduce new matter.
No double dipping: stay and merger
If you file a civil action challenging the validity of any
claim of the patent before you file the IPR request on the same patent, your
IPR will not be instituted. If you file
the civil action after your IPR request or on the same date of your request,
the civil action will be automatically stayed.
Under this “no double dipping” rule, a counterclaim you
filed challenging the validity of a claim of a patent in response to being sued
does not constitute “a civil action challenging the validity of a claim of a
patent.”
One more thing to keep in mind, during the pendency of an
IPR, if another proceeding or matter involving the patent is before the USPTO,
the Director has the right to determine the manner in which the IPR or other
proceeding or matter may proceed, including providing for stay, transfer,
consolidation, or termination of any such matter or proceeding.
No two bits on the apple: Estoppel
So you paid your fee and went through the IPR process. Now, you received a final written decision
from the USPTO Patent Trials and Appeals Board.
But you don’t like the decision.
Can you now go to a civil court (or other administrative places) and try
again? The answer is that depends.
If you could have “raised or reasonably could have raised” a
ground challenging the validity of a patent claim, you cannot use the same
ground challenging such patent claim in a district court proceeding, an
International Trade Commission (“ITC”) proceeding, or any other USPTO
proceeding. Basically, the decision from
an IPR proceeding estops (precludes) your from trying again on the same ground
that has already been considered during the IPR proceeding.
Theoretically, you could try again on a different ground,
right? Well, “reasonably could have
raised” covers a lot of grounds. In
practice, you might find it quite hard to get around.
Can I settle during the IPR process?
Before the USPTO has decided the merits of the proceeding, the
IPR can be terminated upon the joint request of the petitioner and the patent
owner. If the IPR is terminated, no estoppel will attach—meaning if you
settle with the patent owner before the USPTO makes the decision, you are free
to challenge the same patent later in a civil court or any administrative proceedings.
Any such agreement will be treated as business confidential information, will
be kept separate from the file of the involved patents, and will be made
available only to Federal Government agencies on written request, or to any
person on a showing of good cause.
Thanks for reading.
Connie
