Who may petition for IPR?
The challenging party (Petitioner) may be any third party. The Petitioner cannot be the patent owner.
On what grounds can the validity be challenged?
The Petitioner may only challenge the validity of the patent under sections 102 and 103 using only patents and/or printed publications .
Time frame for filing an IPR petition
If the patent is a first-inventor-to-file patent, an inter partes review petition is filed after the later of:
- nine months following the grant of a patent or the reissue of a patent; or
- termination of a previously filed post grant review.
If the patent is a first-to-invent patent, an IPR petition may be filed after the date the patent was granted.
Patent owner’s response
Patent owner may file a preliminary response to the petition limited to reasons why the IPR should be denied institution. The preliminary response must be filed within three months of the date of a notice indicating that the IPR has been granted a filing date. The preliminary response is optional.
Institution of the IPR
An inter partes review will be instituted if the Board finds that the petition demonstrates that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. The Board may institute or deny all or some of the challenged claims. The Board will produce a final determination within one year of institution.
Patent owner’s response after institution
Patent owner may file a response to the petition addressing any of the instituted grounds. Moreover, the Patent Owner must file the response within three months from the date of institution. However, the patent owner may opt to file an amendment to the claims no later than the filing of the response.