What Is an IPR and How Can It Help Your Business?

An Inter Partes Review (IPR) is a relatively new administrative proceeding for patents. The IPR is conducted before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), and is a proceeding by which a third party can challenge the patentability of patent claims.

An IPR can be beneficial if there is an issued patent that prevents you from freely operating your business.  In addition, if you have been sued for patent infringement, filing an IPR should be considered. Depending on whether the IPR is filed early enough in the litigation, the district court may stay the litigation pending the PTAB’s resolution of the issue of patentability.

An IPR petition can rely only on written prior art, such as patents, published patent applications, or printed publications, and may be filed nine months after the grant of a patent. In addition, if the petitioner has been named as a defendant in a district court litigation alleging patent infringement, there is a one-year deadline from being served with the summons to file an IPR challenging the patentability of the asserted patent.

There are a number of advantages to filing an IPR at the PTAB instead of challenging the validity of the patent in district court.

  • The IPR proceeding is much less expensive than a civil litigation, primarily because the timeline is shorter and discovery is limited.
  • The IPR proceeding is adjudicated by a panel of three Administrative Patent Judges (APJs) who are often better equipped to understand the technical issues than a district court judge or jury.
  • Perhaps most important, because there is no presumption of validity of the patent being challenged in an IPR, the standard for demonstrating unpatentability before the PTAB is by the “preponderance of the evidence” standard rather than the higher “clear and convincing” standard used in district court.

Consequently, filing an IPR can be an important tool to deal with a patent of concern.  If you believe an IPR may help your business or if you have any questions, please contact us.

Hoffmann & Baron, LLP is a full-service law firm specializing in all areas of intellectual property, both domestically and internationally, since 1984. We safeguard intellectual property assets through procurement, litigation, counseling, opinions and licensing. What sets us apart is our personalized attention and ability to customize our services to fit the requirements of each client. Hoffmann & Baron, LLP has offices in New York, New Jersey and Virginia/Washington D.C.

Find our recent IPR representations on the PTAB E2E by searching the AIA Review Numbers below: