IP Essentials: Q&A Series

Q How does someone challenge a patent in IPR? A A party (including an entity such as a corporation) challenges a patent in IPR by filing a petition for inter partes review with the Patent Trial and Appeal Board (PTAB), a board of administrative law judges within the U.S. Patent & Trademark Office (USPTO). The petition must identify every claim the petitioner is challenging, every ground of patent invalidity the petitioner wants to raise for every claim, and all of the evidence the petitioner has to support each ground. Filing a petition also requires the payment of a fee set by the USPTO. Q Who can challenge a patent in IPR? A Any person, including corporations but not the U.S. government, can petition for IPR of a U.S. patent. Except, anyone who has been sued for patent infringement can only petition for IPR within one year after they have been served with a complaint. It is important for people who have recently been sued for patent infringement to consider whether or not IPR is right for them as early as possible after they have been sued. Q Does a person have to be sued before they can petition for IPR? A No. A person can petition for IPR if they have not yet been sued, or even if they are at no risk of ever being sued for patent infringement.

Inter partes review, also known as IPR, is an administrative procedure in the United States Patent and Trademark Office for challenging the validity of a patent . IPR was created as part of the 2011 Leahy-Smith America Invents Act as an alternative to raising some patent validity challenges in U.S. district courts. INTER PARTES REVIEW

Q&A SERIES

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