Undetstanding An Inter Partes Review

Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom.
Also note: This is not legal advice.

Introduction

Understanding an inter partes review is essential for any professional in the patent field, from inventors to lawyers. This legal procedure allows a third party to challenge the validity of a previously granted patent, either because it was granted to the wrong person or because it is overly broad or vague. By presenting sound evidence to the Patent Trial and Appeal Board (PTAB), petitioners may be able to invalidate a patent, resulting in damages due for lost profits due to infringement.

It’s clear why this process is so important; if an overly broad or vague patent is allowed to stand, not only could innocent parties suffer infringement but confidence in the system would be damaged. To strengthen their case, petitioners can provide ‘prior art’ – any information that was publicly known before the filing of the patent. It’s critical that such evidence clearly demonstrates why the invention was not novel enough or inventive enough for its grant; this means careful preparation and presentation of material are essential if one wishes their rights as an inventor be fully protected.

The Genie AI team understands how challenging navigating this process can be – which is why we’ve developed open source legal templates specifically tailored for inter partes review proceedings. Using our datasets and community template library anyone can draft valid documents without requiring a lawyer’s expertise - no Genie AI account necessary! Our guide provides step-by-step guidance on how you can access our library today - so read on now!

Definitions (feel free to skip)

Inter Partes Review"" (IPR): A legal process used in the USPTO to challenge the validity of existing patents.
““Petition””: A formal written request sent to the USPTO to initiate an IPR.
““Prior Art””: Evidence that a patent was already in existence before the patent was issued.
““Specification””: A detailed description of the invention as outlined in the patent.
““Drawings””: Visual representations of the invention as outlined in the patent.
““Discovery””: A request for documents and other evidence in support of the arguments of either party.
““Board””: A group of USPTO examiners who review the evidence and make a decision on the patent’s validity.
““Filing Fees””: Fees associated with submitting an IPR petition to the USPTO.
““Answer””: A response from the patent owner to the allegations set out in an IPR petition.
““Conference””: A meeting between the parties and the Board to discuss the issues in the case.

Contents

• Overview of Inter Partes Review
• Requirements for Filing an Inter Partes Review
• Identify the patent
• Review the patent
• Prepare the petition
• Steps of an Inter Partes Review
• File the petition
• Serve the petition
• Answer the petition
• Request discovery
• Request a conference with the Board
• Benefits of an Inter Partes Review
• Process for Responding to an Inter Partes Review
• Timeline for Completion of an Inter Partes Review
• Factors Considered in Making a Decision
• Cost of an Inter Partes Review
• Tips for Successful Inter Partes Reviews
• Research thoroughly
• Prepare in advance
• Respond promptly
• Understand the rules
• Summary of Inter Partes Review Process

Get started

Overview of Inter Partes Review

• Understand what an Inter Partes Review (IPR) is and why you may need to consider it
• Learn the basic steps involved in an IPR process
• Comprehend the timeline of an IPR process and any associated fees
• Become familiar with the roles of the parties involved in an IPR
• When you have a basic understanding of an IPR, you can move on to the next step.

Requirements for Filing an Inter Partes Review

• Understand the grounds for filing an Inter Partes Review (IPR) as defined in 35 U.S.C. § 311
• File a petition for IPR within 1 year of being served with a complaint alleging infringement of the patent being challenged
• Include all relevant information about the petitioner, such as the name, address, and citizenship of each petitioner
• Include all relevant information about the patent owner, such as the name, address, and citizenship of each patent owner
• Pay the filing fee of $12,000
• Be able to prove that the petitioner is a real party-in-interest or privy of a real party-in-interest and is not acting merely as an agent or nominal party

You can check this step off your list and move on to the next step once you have gathered all the necessary information and paid the filing fee.

Identify the patent

• Research and review the patent, including its claims and drawings, to ensure that it is the correct patent for the inter partes review
• Make a list of the patents that are associated with the inter partes review, including the patent number, patent owner, and filing date of the patent
• Determine if any of the claims of the patent are in dispute, and if so, record those claims separately
• When you can identify the patent, its associated patents, and any disputed claims, you can move on to the next step, reviewing the patent.

Review the patent

• Read through the patent and take notes on the claims
• Research any applicable prior art related to the patent
• Analyze the patent claims to determine potential invalidity
• Check if the patent has already been challenged in any previous proceedings
• Identify any potential weaknesses in the patent

Once you have identified the patent, read through the claims and analyzed the patent for invalidity, you can check this step off your list.

Prepare the petition

• Gather all relevant information about the patent, including its history, ownership, and validity
• Identify the grounds on which you will challenge the patent
• Draft the petition, which should include the grounds on which the patent is being challenged, evidence to support the challenge, and a request for the Patent and Trademark Office (PTO) to review the patent
• File the petition with the PTO and pay the associated fees
• Receive confirmation from the PTO that the review has been initiated

You will know you have completed this step when you have filed the petition and received confirmation from the PTO that the review has been initiated.

Steps of an Inter Partes Review

• File the petition with the Patent Trial and Appeal Board (PTAB) and send a copy to the patent owner
• Pay the filing fee
• PTAB will notify you when your petition has been accepted and the review process has begun
• Once accepted, you will have completed this step and can move on to the next step in the IPR process.

File the petition

• Choose a registered patent attorney to handle the petition filing process
• File the petition with the Patent Trial and Appeal Board (PTAB) and pay the filing fee
• Include all the necessary information in the petition, such as:
• A detailed description of the patent you are challenging
• A statement of the real party of interest
• The grounds on which you are challenging the patent
• Make sure to include any evidence to support your challenge
• You will know you have successfully completed this step when you have received an official Notice of Filing from the PTAB.

Serve the petition

• File the petition with the United States Patent and Trademark Office (USPTO)
• Serve the petition on the opposing party
• A copy of the petition must be served on the opposing party as soon as possible, but no later than one month after the petition is filed
• The petition must be served in accordance with the USPTO’s rules, which vary depending on the type of party being served
• A Certificate of Service must be filed with the USPTO once the petition has been served
• You will know when you can check this off your list and move on to the next step when you have completed the service and filed the Certificate of Service with the USPTO.

Answer the petition

• File an answer to the petition within one month from the date of service
• Make sure to address each of the alleged grounds for unpatentability in the petition
• Include any defenses you may have to the petition
• File your answer with the Patent Trial and Appeal Board
• Make sure to pay all required fees
• You will know this step is complete when you have filed an answer with the Patent Trial and Appeal Board and paid all applicable fees.

Request discovery

• Draft a motion for discovery and file it with the Board
• Include in the motion the documents you want to receive from the other party
• You can also include the documents that you are willing to provide to the other party
• Serve the motion for discovery on the other party
• Wait for the other party to respond to the request for discovery
• When the other party responds to your request, you will have completed this step and can move on to the next step.

Request a conference with the Board

• File a Motion to Participate in a Conference with the Board with the PTAB.
• Include a statement of why you are requesting a conference, as well as any relevant evidence or argument.
• You will know you have completed this step when you receive a decision from the PTAB granting or denying your motion.

Benefits of an Inter Partes Review

• Knowing the benefits of an Inter Partes Review (IPR) can help you understand the process better and can motivate you to respond to the IPR.
• Benefits of an IPR include a faster resolution than through the courts, more cost-effective resolution than the courts, and a higher chance of success than in court.
• Additionally, an IPR can provide a more efficient means of resolving patent disputes that cannot be resolved in other ways.
• Once you have a better understanding of the benefits of an IPR, you can move on to the next step in the process of responding to an IPR.

Process for Responding to an Inter Partes Review

• Review the inter partes review petition and identify the claims and grounds of unpatentability.
• File a preliminary response to the inter partes review petition.
• File a response to the Patent Trial and Appeal Board’s (PTAB) decision on the inter partes review.
• Submit evidence and argument to the PTAB.
• Monitor any new evidence or argument presented by the petitioner.
• File a reply brief to the PTAB if necessary.
• Attend any oral argument before the PTAB if necessary.

You will know you can check this off your list when the PTAB issues its final written decision on the inter partes review.

Timeline for Completion of an Inter Partes Review

• An Inter Partes Review typically takes 12 months to complete from the date the petition is filed
• Once the petition is filed, the Patent Trial and Appeal Board (PTAB) has three months to decide if an IPR will be granted
• If granted, the PTAB will issue a trial order with a schedule for exchanging initial disclosures and submitting motions
• The initial disclosures should be exchanged within two months of the trial order
• The parties must also submit their motions within the time period set by the PTAB
• After the completion of the motion period, the PTAB will schedule a hearing
• The hearing usually takes place within six months of the trial order
• After the hearing, the PTAB will render a decision which is usually issued within three months

You will know when you can check this off your list and move on to the next step when you receive the PTAB’s decision on your Inter Partes Review.

Factors Considered in Making a Decision

• The Patent Trial and Appeal Board (PTAB) will consider evidence from both sides regarding the patentability of the claims in question
• The PTAB will look at the prior art and the arguments presented by each side
• The PTAB will decide whether or not the patent claims are invalid based on the evidence presented and arguments made
• The PTAB will also consider whether the claims are obvious or not in light of the prior art

You’ll know this step is complete when the PTAB has made its decision regarding the patentability of the claims in question.

Cost of an Inter Partes Review

• Understand the cost associated with filing an IPR Petition
• Consider the cost of the proceeding, filing fees, attorney’s fees, and expert witness fees
• Determine if you’ll need to budget for an appeal
• Calculate the potential costs of responding to an IPR Petition
• Assess the potential costs of an unfavorable outcome
• Be aware of the cost of withdrawing an IPR Petition
• You can check off this step of understanding the cost of an Inter Partes Review when you have a clear understanding of all the associated costs of filing and responding to an IPR Petition.

Tips for Successful Inter Partes Reviews

• Familiarize yourself with the process of an Inter Partes Review and its timeline
• Gather all relevant information and evidence that you can use to support your case
• Identify and consult with an experienced attorney to provide guidance and support throughout the process
• Make sure to file all documents within the set timeline
• Make sure to stay up to date on any developments and new information that might be pertinent to the case
• Be prepared for the possibility of appeals or a subsequent review
• Once all documents are filed and the review has been completed, you can check this off your list and move on to the next step.

Research thoroughly

• Read up on the basics of inter partes reviews and the USPTO’s regulations for filing a petition
• Familiarize yourself with the process for filing a petition, the standards for initiating a review, and the different outcomes of a review
• Find out what evidence and arguments must be presented in the petition to make a successful case
• Research potential prior art that could be used to support your petition
• Gather evidence that disproves the patentability of the invention in question
• When you have a comprehensive understanding of the process and have gathered the necessary evidence, you’ll be ready to move on to the next step.

Prepare in advance

• Gather all relevant documents, including patent applications, prior art, and other evidence
• Become familiar with the statutes and rules governing inter partes review proceedings
• Identify any potential issues that may be raised in the proceeding
• Draft any necessary documents for filing, such as a petition, complaint, and response
• Familiarize yourself with the overview of the inter partes review process
• When you are prepared for the proceeding, you can check this step off your list and move on to the next step.

Respond promptly

• File a response to the notice of initiation within 1 month of receipt
• In your response, explain why the petition should be denied
• You can either file a written response or request an oral hearing
• Utilize your legal team to prepare and submit the response
• You’ll know when you can move on to the next step when the response is successfully submitted to the USPTO.

Understand the rules

• Read the applicable sections of the America Invents Act (AIA)
• Review the Rules of Practice for Inter Partes Review proceedings
• Understand the process of the IPR and the timeline for filing and responding
• Understand the criteria for filing an IPR
• Research existing IPRs to gain a better understanding of the process
• When you have a full understanding of the process, you can move on to the next step.

Summary of Inter Partes Review Process

• Understand the basics of the inter partes review process, including the timeline and the roles of the parties involved
• Know the purpose of the inter partes review and the legal framework in which it is conducted
• Learn about the different types of evidence that can be presented during the review proceedings
• Recognize the different stages of the inter partes review and the major deadlines associated with each phase
• Understand the procedures and rules that are in place to ensure fairness and uniformity during the review process
• Be aware of the potential outcomes of an inter partes review and the legal implications of each

Once you have a clear understanding of the inter partes review process, you can check this off your list and move on to the next step.

FAQ:

Q: What are the key differences between an Inter Partes Review and a Patent Trial and Appeal Board review?

Asked by Ashley on the 11th of April, 2022.
A: An Inter Partes Review (IPR) is a process conducted by the Patent Trial and Appeal Board (PTAB) in which third parties can challenge the patentability of issued patents. The PTAB will determine whether or not the patent is valid in light of prior art that was not considered during initial examination. This is different from a Patent Trial and Appeal Board (PTAB) review, which is an appeal process for patents that have already been rejected by the USPTO. A PTAB review allows applicants to present new evidence or arguments to support their patent application, whereas an IPR does not.

Q: What are some of the advantages of opting for an Inter Partes Review?

Asked by William on the 28th of September, 2022.
A: An Inter Partes Review can be a cost-effective solution for challenging the validity of an issued patent. It is generally faster and cheaper than other avenues such as litigation in court, and can help reduce litigation costs if successful. It can also provide clarity on the validity of a patent before investing in expensive licensing or research and development costs associated with it. Additionally, due to its limited scope and expedited proceedings, an IPR may be more suited to complex patents than other legal methods.

Q: How does an Inter Partes Review compare to a Post-Grant Review?

Asked by Olivia on the 15th of February, 2022.
A: An Inter Partes Review (IPR) is essentially a re-examination of a patent’s validity based on prior art that was not considered during initial examination, whereas a Post-Grant Review (PGR) is an administrative process for challenging issued patents on any grounds, including prior art and anticipation. IPR proceedings are conducted before the PTAB, while PGR proceedings are conducted before the USPTO’s Board of Patent Appeals and Interferences (BPAI). Additionally, unlike IPRs, PGRs can be filed within nine months after patent grant and require payment of fees up front.

Q: What kind of evidence do I need to file an Inter Partes Review?

Asked by Emma on the 7th of March, 2022.
A: To file an IPR petition you will need evidence that demonstrates that one or more claims in an issued patent are unpatentable based on prior art that was not considered during initial examination. This evidence can take many forms including printed publications (such as books or journal articles), publicly available patents or patent applications, evidence from public use or sale, or any other material that could reasonably be considered by someone skilled in the relevant field as evidence of prior art.

Q: Are there any restrictions or limitations for filing an Inter Partes Review?

Asked by Michael on the 4th of May, 2022.
A: Yes - there are certain restrictions and limitations associated with filing an IPR petition. Firstly, you must file your petition within one year after being served with a complaint alleging infringement of the subject patent; secondly, you must demonstrate that you have standing to file an IPR; and thirdly, you must show that you are likely to prevail in your challenge to at least one claim in the subject patent. Additionally, there are restrictions around who can file an IPR based on USA jurisdiction - for example, only parties who have been sued for infringement can file for relief from infringement through IPR proceedings.

Q: Are there any differences between US and EU laws regarding Inter Partes Reviews?

Asked by Isabella on the 9th of June 2022.
A: Yes - there are significant differences between US and EU laws regarding IPRs. In Europe there is no equivalent process to US IPRs - instead companies will typically use other avenues such as litigation or invalidity proceedings to challenge patents they believe are invalid. The US also has more liberal rules around who can file IPRs - anyone who has been served with a complaint alleging infringement has standing to file an IPR petition in the US regardless of jurisdiction - whereas in Europe only parties directly affected by alleged infringement have standing to challenge patents through invalidity proceedings. Furthermore, while US IPRs are conducted before administrative tribunals such as the PTAB rather than courts, European invalidity proceedings are conducted before national courts in each Member State involved in the dispute.

Q: How much does it typically cost to file an Inter Partes Review?

Asked by Logan on the 1st of October 2022.
A: The cost of filing an IPR petition depends on how many claims you are challenging and how much evidence you need to submit in support of your challenge - typically between $15-$30k USD excluding attorney fees. There also may be additional costs associated with filing such as fees for filing documents electronically with eFiling services like EFS-Web or ESTTA/EDIS; fees for serving documents to all parties; fees for translating documents into foreign languages; attorney fees; expert witness fees; etc., so it’s important to factor these additional costs into your calculations when considering filing a petition.

Q: How long does it typically take for a decision to be made after filing an Inter Partes Review?

Asked by Avery on the 17th December 2022.
A: Generally speaking it takes around 18-24 months from filing your petition until you receive a final decision from PTAB following appeal (if necessary). However this timeline varies depending on factors such as how complex your case is; how many parties are involved; how much evidence needs to be considered; etc., so it’s important to factor these considerations into your timeline when planning for filing or responding to petitions filed against you. Additionally, if you find yourself in a situation where you need immediate relief from alleged infringement then it may be worth considering other legal options such as litigation which could provide quicker resolution than waiting for PTAB’s decision following appeal (if necessary).

Q: Are there any alternative solutions available if my petition is denied after filing an Inter Partes Review?

Asked by Mason on the 12th August 2022.
A: If your petition is denied then you may want to consider appealing PTAB’s decision before either Federal Circuit Court or Supreme Court depending on what stage your case has reached at time of denial - however this option should only be explored if there is sufficient grounds for appeal as it may incur additional costs which could potentially outweigh any benefits gained from successful appeal depending on individual circumstances so it’s important to weigh up pros and cons before making any decisions here. Alternatively you may wish to explore other legal avenues such as litigation which may provide quicker resolution than waiting for PTAB’s decision following appeal (if necessary).

Q: Does my country have any impact when filing an Inter Partes Review?

Asked by Joshua on the 23rd November 2022.
A: Yes - different countries have different rules and regulations around filing petitions for IPRs so it’s important to check local laws before proceeding with filing your petition especially if you plan to challenge patents issued outside USA jurisdiction e.g., if you plan to challenge European patents then you should check EU regulations around filing petitions for invalidity proceedings before proceeding with filing your petition etc., Additionally some countries may also have different timelines associated with filing/responding/appealing/etc., so it’s important to factor this into your timeline when planning for filing/responding/appealing/etc.,

Example dispute

Suing a Patent Holder for Infringement:

• Plaintiff may raise a lawsuit citing a violation of the inter partes review process, claiming that the patent holder’s patent is invalid due to failing to comply with the process.
• The plaintiff should provide evidence that the patent holder failed to comply with the inter partes review process. This could include submitting incorrect information, or failing to provide necessary evidence to make a case for their patent.
• Depending on the strength of the evidence provided, the court may find that the patent is invalid due to the patent holder’s failure to comply with the inter partes review process.
• If the court finds in favor of the plaintiff, the patent holder may be liable for damages caused by their infringement. The damages could include lost profits, legal costs, and any other costs incurred due to the patent holder’s infringement.
• Settlement could be reached through a settlement agreement that could include payment of damages and/or the patent holder agreeing to withdraw the patent.

Templates available (free to use)

Inter Partes Review Mandatory Initial Disclosures Patent Owner
Inter Partes Review Motion Additional Discovery Regarding Commercial Success Patent Owner
Inter Partes Review Motion Additional Discovery Regarding Real Party In Interest Or Privy Patent Owner
Inter Partes Review Motion Amend Patent Owner
Inter Partes Review Motion Exclude Patent Owner
Inter Partes Review Motion Exclude Petitioner
Inter Partes Review Motion Joinder Petitioner
Inter Partes Review Opposition To Motion Additional Discovery Regarding Commercial Success Petitioner
Inter Partes Review Opposition To Motion Additional Discovery Regarding Real Party In Interest Or Privy Petitioner
Inter Partes Review Opposition To Motion Amend Petitioner
Inter Partes Review Opposition To Motion Exclude Patent Owner
Inter Partes Review Opposition To Motion Exclude Petitioner
Inter Partes Review Opposition To Motion Joinder Patent Owner
Inter Partes Review Patent Owner S Request For Director Review
Inter Partes Review Patent Owner S Response To Petitioner S Rehearing Request Institution Denial
Inter Partes Review Petitioner S Rehearing Request Institution Denial
Motion Stay Pending Inter Partes Review Memorandum Of Law Re Patents
Opposition To Motion Stay Pending Inter Partes Review Memorandum Of Law Re Patents
Patent Owner S Preliminary Response To Petition For Inter Partes Review
Patent Owner S Response To Petition For Inter Partes Review
Petition For Inter Partes Review

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