Inter Partes Review

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Should one wish to challenge the validity of a patent after the expiration of the Post-Grant Review (“PGR”) filing period or for which PGR was not available (patents issuing from applications having an effective priority date before March 16, 2013) inter partes review (“IPR”) is available. However, one must be mindful that the grounds for instituting an IPR are more restrictive than for PGR – a petitioner may request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under § 102 or § 103 and only on the basis of prior art consisting of patents or printed publications.

All patents are eligible for IPR; however, an IPR petition for review of a patent examined under the first-to-file standards (includes all patents issuing from applications having an effective priority date on or after March 16, 2013) cannot be filed until after the later of: (i) nine months after the grant of a patent or issuance of a reissue of a patent; or (ii) the date of termination of any PGR of the patent. One additional requirement must be met for IPR: the petition requesting the proceeding must be filed within one year after the date on which the petitioner, the petitioner’s real party in interest, or a privy of the petitioner has been charged with infringement under the patent.

Institution of IPR requires a higher standard than PGR: the petitioner must demonstrate by a preponderance of the evidence that there is a “reasonable likelihood that at least one of the claims challenged in the petition is unpatentable”. In deciding whether to institute a review, the Board may reject the petition or request because the same or substantially the same prior art or arguments previously were presented to the USPTO. All parties are statutorily precluded from filing an appeal with a higher court to challenge the Board’s decision whether to institute an IPR. However, if the petition for IPR is denied, the petitioner may submit a request to the Board itself for a rehearing of the decision.

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