Invalidating Someone Else's Patent - Part 2: Inter Partes Reviews. Episode 78

Ex Parte Reexamination vs. Inter Partes Review

In the last episode, I discussed ex parte reexaminations, one type of procedure available at the Patent Office to challenge the validity of a granted patent. In this episode, I’ll explain another type of procedure: inter partes review (IPR).

You may also come across the term inter partes reexamination. This can be confusing because it sounds similar to inter partes review, but they are different procedures. Inter partes reexamination applied only to patents filed between November 29, 1999, and September 15, 2012, and is no longer available for patents filed after that date. Since this procedure is being phased out, I won’t be covering it.

Inter partes review, on the other hand, applies to patents filed on or after September 16, 2012. It is significantly more expensive to file than an ex parte reexamination, with a filing fee of $30,500 payable to the Patent Office. This amount does not include attorney fees. In contrast, an ex parte reexamination typically costs around $3,000, depending on the size of your business.

Why Choose Inter Partes Review Over Ex Parte Reexamination?

Despite its higher cost, inter partes review offers a major advantage: you get more interaction with the Patent Office. With ex parte reexamination, you file your initial request, and that’s usually the end of your participation. You do not get a chance to argue further or clarify points once the process begins.

Inter partes review, on the other hand, functions more like a mini-trial. You have multiple opportunities to interact with the Patent Office and present arguments. This increased engagement can be beneficial when challenging a patent’s validity.

Key Similarities and Differences Between Inter Partes Review and Ex Parte Reexamination

Inter partes review, like ex parte reexamination, can only challenge a patent based on lack of novelty or obviousness. Other challenges, such as claiming that a patent is invalid due to unpatentable subject matter, must be handled through different procedures.

One important timing difference is that inter partes review can only be requested at least nine months after a patent has been granted. If nine months have not yet passed, and you do not want to use an ex parte reexamination, another option is post-grant review, which I will cover in the next episode.

Standards for Granting an Inter Partes Review

For an ex parte reexamination, you must demonstrate a substantial new question of patentability, meaning that a reasonable examiner would find the argument important in determining patent validity.

For inter partes review, the standard is higher: you must show a reasonable likelihood that you will succeed in proving that at least one challenged claim is invalid. In practice, this makes inter partes review slightly harder to obtain than ex parte reexamination.

Another key difference is who examines the case. In an ex parte reexamination, a single examiner reviews the request. In an inter partes review, a panel of three or more judges from the Patent Trial and Appeal Board (PTAB) oversees the case.

Inter Partes Review as a Mini-Trial

An inter partes review allows for legal procedures that are not available in an ex parte reexamination. These include:

• Discovery, which allows the requesting party to obtain relevant documents from the patent owner.

• Oral hearings, where both parties can present arguments.

• Expert witnesses, including the ability to cross-examine witnesses.

Because inter partes review is an adversarial process, it cannot be requested anonymously. Unlike an ex parte reexamination, where the challenger can remain unknown, the patent owner will know exactly who is challenging their patent in an inter partes review.

Filing a Petition for Inter Partes Review

To initiate an inter partes review, you must file a petition with the Patent and Trademark Office. This petition should include:

• The identity of the petitioner (you or your company).

• Arguments detailing why at least one claim in the patent is invalid.

• Exhibits and supporting materials proving that the claims are either not novel or are obvious.

You must also serve the petition on the patent owner. The patent owner then has the opportunity to file a preliminary response to your petition.

Decision to Institute Inter Partes Review

After reviewing the petition and preliminary response, the Patent Trial and Appeal Board will determine whether there is sufficient merit to proceed. If the Board decides that there is a reasonable likelihood that at least one claim is invalid, they will institute inter partes review.

If your petition is denied, you will receive a partial refund of the $30,500 fee (2019), typically about half. However, you must pay the full amount upfront and only receive reimbursement if your petition is not granted.

The total costs vary depending on the number of claims challenged, but these are rough estimates.

The Inter Partes Review Timeline

If your inter partes review petition is granted, a scheduling guideline will be issued. This sets deadlines for various stages of the process, including:

• Patent owner responses to the petition.

• Motions to amend claims.

• Your reply to the patent owner’s response.

• Requests to exclude evidence.

• Oppositions to evidence exclusions.

• Oral argument dates.

The entire process is structured like a trial but is handled within the Patent Office rather than the traditional court system. While patents can also be challenged in court, litigation is significantly more expensive. The Patent Office provides a streamlined and cost-effective alternative, with a panel of technically knowledgeable judges reviewing the case.

After completing the process, a final decision should be issued within one year of the inter partes review being granted. Given the time required to process the initial petition, a decision is typically expected within 18 months of filing. This is generally much faster than pursuing invalidation through the court system.

Total Costs of Inter Partes Review

Beyond the $30,500 fee payable to the Patent Office, legal fees add significantly to the cost. Including attorney fees, expert witness costs, and discovery expenses, an inter partes review typically costs between $100,000 and $600,000. While expensive, this is still much cheaper than challenging a patent in court, which can easily exceed $1 million.

Conclusion

Inter partes review is a powerful tool for invalidating a patent, but it is costly and complex. Unlike ex parte reexamination, it provides greater interaction with the Patent Office and includes legal procedures similar to a court trial.

If you are considering invalidating a patent, consult a patent attorney to determine the best procedure for your situation. This episode should give you enough background to ask informed questions and understand why an attorney might recommend one approach over another.

I’m Adam Diament, and until next time, keep on inventing!