Tips for Prevailing in a PTO Inter Partes Review

Two years ago, the Leahy-Smith America Invents Act introduced new administrative proceedings called inter partes reviews for challenging patent validity. Before AIA passage, IPRs were touted as vehicles for addressing mistakenly issued patents early, before disrupting entire industries or causing expensive litigation.

Three primary benefits of IPRs are most often mentioned. Those include speed—IPRs proceed under an expedited, statutory timeline that will see a final written decision within 16 to 18 months after petition filing; a friendly venue for patent challenges—technically-trained administrative law judges in the United States Patent & Trademark Office (USPTO) decide IPR validity challenges, rather than lay juries, like in U.S. district court litigation; and a lower evidentiary standard of proof—patent claims are stuck down during an IPR if a preponderance of the evidence shows the claims are either not new or anticipated, or would have been obvious over prior art patents and printed publications.