overview_prepclass

OVERVIEW:
A PRIMER ON IPRs

INTER PARTES REVIEW

Timing

  • An IPR petition can be filed starting 9 months after the patent grant date or after termination of a Post Grant Review. (If the patent does not qualify for Post Grant Review, the IPR petition can be filed before that 9-month date.)
  • An IPR cannot be instituted if the petition requesting an IPR is filed more than 1 year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Threshold

  • There is “a reasonable likelihood that petitioner would prevail with respect to at least 1 claim of the claims.”

Scope

  • Petitioner may raise arguments under 35 U.S.C. §§ 102 and 103 (anticipation and obviousness, respectively), based on patents and printed publications.

Applicability

  • Applies to all patents.

Estoppel

  • A petitioner in an IPR may not assert that a claim is invalid on any ground that the petitioner raised or “reasonably could have raised” in the IPR in a subsequent district court or ITC action. In addition, a petitioner may not request or maintain a subsequent proceeding before the PTO with respect to any challenged patent claim on any ground raised or that reasonably could have been raised.
  • A patent owner is estopped from taking actions inconsistent with an adverse judgment, such as obtaining a claim in a patent that is patentably indistinct from a finally refused or cancelled claim.