Inter Partes Review

Patent Attorneys Based in Boston and Representing Clients Worldwide

Claims are legal expressions within a patent of precisely what the patent does and does not cover. A patent owner only has the right to exclude others from making, utilizing, or selling the things described by the claims. A third party can challenge patentability through an inter partes review. This is a kind of trial conducted at the United States Patent and Trademark Office (USPTO). During this proceeding, the patentability of one or more claims in a patent is reviewed. If you need legal representation for an inter partes review, the Boston patent lawyers at Chavous IP Law may be able to represent you.

Navigating the Inter Partes Review Process

The inter partes review was created under the America Invents Act. Before that, if somebody wanted to invalidate another person or company’s patent in front of the USPTO, they had to ask for an ex parte reexamination, which involved only their limited involvement, or an inter partes reexamination, which gave them more but still restricted involvement. Through an inter partes review, a petitioner accused of patent infringement is now able to challenge the validity of another person’s patent by using a trial-like procedure before the USPTO.

The inter partes review process starts with a third party who does not own the patent and wants to challenge it. Often, the third party has been accused of infringement. However, under 35 U.S.C. § 315(a)(1), anybody other than the patent owner can request an inter partes review if they have not previously filed a civil action challenging the validity of a patent claim, such as a declaratory judgment lawsuit. The third party is not barred if they filed a counterclaim in a patent infringement action, filed a claim for a declaratory judgment after the date that the inter partes action was filed, or filed a declaratory judgment action asking only for a judgment that they did not infringe. Inter partes review requires a substantial understanding of the rules and deadlines. For instance, a third party must file a petition either nine months after the patent is granted or a reissue patent is reissued, or upon the termination of a post grant review when a post grant review is instituted, whichever is later. However, this filing deadline does not apply to a first-to-invent patents. Upon the filing of a petition, the patent owner has the opportunity to file an initial response. After these filings, an inter partes review can include expert affidavits and cross-examination of witnesses submitting affidavits.

There are some advantages to using an inter partes review. First, an inter partes review is much cheaper than patent litigation. Second,the Patent Trial and Appeal Board (“PTAB”) at the USPTO provides more expertise in analyzing whether a patent is valid. Third, this process is also swifter than the two prior alternative procedures, allowing for resolution within 12 months from the date of the PTAB’s initial ruling. Fourth, an inter partes review does not require that invalidity be proven by clear and convincing evidence, like in federal court, but by a preponderance of the evidence.

There are some drawbacks to inter partes review that must be carefully addressed. The defenses available during inter partes review are limited to obviousness and novelty based on prior art, including patents, applications, or printed publications. Also, if the PTAB renders a final decision that one or more claims are patentable, then the petitioner cannot challenge the obviousness or novelty of the claims in federal court or before the USPTO. Thus, an infringer must prepare and execute an inter partes review with care.

An inter partes review can be used as part of a broader defense strategy. Whether representing an infringer or a patent owner, the Firm approaches inter partes review as a significant strategy consideration. It is meant to give people who want to challenge the validity of a patent the chance to do it regardless of whether they have been sued for patent infringement. This proceeding can allow third parties to have certain litigation tools, such as limited discovery, to explore the issues. On the other hand, a patent owner must consider the very real chance that an inter partes review will be filed and must prepare to overcome the automatic stay of litigation as well as determine what claims are necessary to the patent owner’s case.

Retain an Experienced IP Lawyer in Boston to Protect Your Interests

If you are looking for a lawyer to handle an inter partes review or an appeal of a patent dispute, the Boston firm of Chavous IP Law may be able to help you. Our principal has a decade of patent experience in the fields of pharmaceuticals, biochemistry, biotechnology, immunology, and medical devices. We represent clients throughout the United States and the world. Call us at 351-207-5972 or use our online form to set up your appointment.