Inter Partes Review (IPR)

Inter partes review (IPR) allows a third party to challenge the validity of a patent based on novelty or obviousness over a prior patent, published patent application, or printed publication.  Unlike an ex parte reexamination, the challenger participates throughout the process, and is allowed to conduct discovery, take depositions, file motions, and participate at oral hearing. 

An IPR petition may be filed against all patents, although in the case of first-to-file patents (patents that have an effective date of March 16, 2013 or later) the IPR can only be filed more than nine months from the patent’s issuance date.  The IPR may not proceed if the challemger earlier filed a civil action challenging the patent’s validity, or if more than one year has passed since a civil action was filed against the challenger.  If the challenger is unsuccessful, all invalidity challenges that were raised or reasonably could have been raised will be unavailable to the challenger in a subsequent post-issuance proceeding or civil action.  The PTO initial request fee for an IPR is $9,000 for up to 20 claims, plus $200 for each claim in excess of 20 claims total.  If the IPR is initiated, there are additional PTO fees of $14,000 for up to 15 claims, plus $400 for each claim in excess of 15 claims total.

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