Knobbe Martens Intellectual Property Law - Inter Partes Review

What is an Inter Partes Review? An Inter Partes Review (IPR) is a counterpart to a Post-Grant Review (PGR) and provides another method for challenging patents before the U.S. Patent and Trademark Office. IPR and PGR share many of the same procedures and rules, but there are several important differences between the two programs. What are the major differences between an IPR and a PGR? While a PGR is available for challenging patents only during the first nine months after issuance, an IPR is available for challenging patents after this initial window. While only patents filed after March 16, 2013 can be challenged in a PGR, all patents regardless of filing date can be challenged in an IPR. The grounds for challenging patents in an IPR are more restricted than a PGR – an IPR challenger is limited to arguing invalidity based on prior-art patents and printed publications. What are the government fees associated with an IPR? The government charges the following fees to institute an IPR: $9,000 - IPR request fee (up to 20 claims); $14,000 - IPR post-institution fee (up to 15 claims); $200/claim - IPR request fee for each claim over 20; and $400/claim - IPR post-institution fee for each claim over 15. Is it better to challenge a patent in Federal court or with an IPR? An IPR can offer advantages compared to challenging a patent in Federal court. For example, an IPR can be relatively quick. Most proceedings will conclude within about 18 months, compared to the several years that many Federal court litigations require. An IPR can be less expensive, particularly with respect to discovery costs. While some discovery is allowed in an IPR, the scope is much narrower than Federal court litigation. One potential disadvantage for patent challengers who choose the IPR route is the estoppel effects. That is, a patent challenger in an IPR may not assert in a later proceeding any ground that it raised or could have raised in the IPR.  What is Knobbe Martens’ experience with IPRs? While IPRs were only recently created, Knobbe Martens already has an active IPR practice. Knobbe Martens is counsel of record in 18 pending IPRs, representing both patent owners and patent challengers roughly equally. Our thorough knowledge and experience in other PTO dispute proceedings, such as ex parte reexaminations, inter partes reexaminations, and interferences, combined with our proven record in Federal court patent litigation, give us an advantage in the new IPR proceedings.