03 Oct How to File for an Inter Partes Review of a Patent’s Validity
In 2012, the Patent Trial and Appeal Board started offering the inter partes review (IPR) process. This process was designed to serve as an alternative to having the validity of a patent determined in a courtroom. In an IPR, a PTAB judge oversees the dispute between a patent holder and the petition filer, and ultimately determines whether the patent in question is valid.
IPRs are a potentially lower cost means of determining a patent’s validity in a relatively short amount of time. However, this is still a complex legal process, and requires great care and diligence to navigate successfully. You need to have an experienced patent attorney on hand to advise and guide you. To learn how the Law Office of Michael O’Brien can help you, call us at 916-760-8265, or send us a message using our contact form.
What to include in your inter partes review petition.
If you wish to petition for an IPR of a patent you believe to be invalid, there are 7 elements which have to be included in the petition, along with the $9000 inter partes review request fee:
- An explanation of why you have standing
- A list of the parties with interest in the case
- A list of all the patent claims you are challenging, and your rationale for challenging each one
- A claim construction for each of the challenged claims (a claim construction is an interpretation of the meaning of a claim)
- Your rationale for why the inventor’s work is unpatentable
- An explanation of the evidence you based your arguments on
- Copies of all of the evidence you used
One of the most critical and often overlooked elements of an IPR petition is the evidence you use to bolster your argument.
Remember that the other side will go over everything every piece of evidence you submit with a fine-tooth comb and identify weaknesses that can be exploited. Good, solid evidence for your argument of unpatentability is absolutely indispensable.
The best way to assemble evidence is to identify and hire an expert witness who can write up a report explaining in detail why the patent isn’t valid. This report can contain the required claim construction(s), as well as your explanation of why the invention isn’t patentable.
Ideally, you should work in tandem with the expert and a patent attorney, assembling the report as a team. The patent attorney can help ensure that all of the necessary formalities are addressed in the report, while the expert handles the analytical content. But you must be sure to hire a truly experienced and knowledgeable expert, as your expert can (and will) be deposed in the hearing. If your expert is an amateur, or is even just a little sketchy or out of date in their knowledge, these weaknesses will be exposed and your petition will likely fail.
If you are considering filing an inter partes review petition, you need to have an experienced patent attorney assist you in assembling the petition, collaborating with your hired expert, and presenting your case to a judge.