Inter Partes Review

Definition

Inter partes review is a trial proceeding conducted at the United States Patent and Trademark Office (USPTO) to review the patentability of one or more claims in an issued patent. It allows a third party to challenge the validity of a patent by presenting prior art evidence that the patent should not have been granted.

5 Must Know Facts For Your Next Test

1. Inter partes review was created by the America Invents Act in 2011 as an alternative to expensive patent litigation in federal courts.
2. Inter partes review allows a third party to challenge the validity of a patent based on prior art patents or printed publications, but not other grounds like indefiniteness or lack of written description.
3. The PTAB must decide an inter partes review within 12-18 months of the proceeding being instituted, providing a faster resolution than district court litigation.
4. If the PTAB finds one or more claims of a patent unpatentable in an inter partes review, the patent owner can appeal the decision to the Federal Circuit Court of Appeals.
5. Inter partes review has become a popular tool for challenging 'patent trolls' and weak patents, leading to a high rate of patent claims being found unpatentable.

Review Questions

• Explain how inter partes review fits into the role of the U.S. legal system for patents.
  • Inter partes review provides an administrative alternative to patent litigation in federal courts. It allows third parties to challenge the validity of issued patents at the USPTO, rather than going through the more expensive and time-consuming process of suing in district court. This helps to weed out low-quality patents and serves as a check on the patent system, ensuring that only truly novel and non-obvious inventions are granted patent protection.
• Describe how inter partes review relates to the process of 'getting started' with a new patent.
  • Inter partes review can impact the process of getting a new patent in a few key ways. First, the threat of an inter partes review may cause patent applicants to be more rigorous in their prior art searches and patent drafting to avoid having their patent challenged later. Second, the availability of inter partes review provides an incentive for third parties to monitor newly issued patents and quickly challenge any they believe are invalid based on prior art. This can make the overall patent procurement process more robust and help ensure that only deserving inventions are granted patent protection.
• Analyze how inter partes review has been used to address the issue of 'patent trolls' and efforts to thwart them.
  • Inter partes review has become a powerful tool for combating 'patent trolls' - entities that acquire patents not to practice the underlying inventions, but solely to extract licensing fees or sue operating companies. The relative speed and low cost of inter partes review compared to district court litigation makes it an attractive option for companies targeted by patent trolls to challenge the validity of the asserted patents. The high rate of patent claims being found unpatentable in inter partes review proceedings has helped to reduce the leverage of patent trolls and discourage such abusive litigation tactics, serving as an important effort to thwart the patent troll problem.

Related terms

Post-Grant Review:

A process at the USPTO where a third party can challenge the validity of a recently issued patent on any ground of patentability within 9 months of the patent's issuance.

Covered Business Method Review: A type of post-grant review proceeding at the USPTO that allows challenges to certain business method patents as being unpatentable.

Patent Trial and Appeal Board (PTAB): The administrative court at the USPTO that hears and decides inter partes review, post-grant review, and other patent trial proceedings.