Partner
Roger Emerson
Areas of Practice
Intellectual Property (patents, trademarks, copyrights, trade secrets)
There are going to be many instances when you may want to prove another entity’s patent is invalid. It may be infringing on yours, in some way, such as using a part of it without permission. An inter partes review (IPR) of a patent may help you prove that an existing patent is invalid so you can stop further instances of infringement.
Protecting your IP is often a challenging, but necessary process. The IP attorneys of Emerson Thomson Bennett can help you challenge an existing patent
What is an Inter Partes Review?
An inter partes review is a trial held before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) that assesses whether or not an existing patent is valid. This can review the patentability of one or more claims of a patent. An IPR can be filed for any type of patent.
To file an inter partes review, you must have grounds in 35 U.S.C. § 102 or 35 U.S.C. § 103. Prior art is only relevant to patents and printed publications.
IPR can have several significant benefits for those looking to have a patent’s validity reviewed. This is often considered more cost-effective and efficient than other methods. An IPR can also yield faster results, as a determination is issued within one year, while patent litigation can often take several years.
Who Can File an Inter Partes Review?
Anyone who isn’t the patent owner and who hasn’t filed a civil suit challenging the validity of the patent can file an inter partes review for a patent.
Additionally, you may only file an IPR for a first-inventor-to-file when the patent has been granted for at least nine months. Prior to these nine months, we can assist with requesting a post-grant review instead of an inter partes review. This does not apply to first-to-invent patents.
