Understanding Key Elements Of Inter Partes Review Proceedings
Patent disputes often involve complex issues that few firms are equipped to handle due to the specialized knowledge requires, as well as the meticulous planning and strategizing that goes into each dispute.
At PV Law LLP, our team of experienced and highly skilled patent attorneys are keenly focused when they engage in disputes on behalf of our clients, leveraging all of their efforts to obtain a successful outcome. Such strategies may involve use of post-grant review and inter partes review proceedings before the Patent Trial and Appeal Board (PTAB).
Our team of attorneys has represented clients through inter partes reviews since their inception in 2012. This representation has spanned multiple different types of technology areas on both the petitioner’s and patent owner’s sides. Our team of attorneys includes members that have been recognized by Patexia Insights for their skill in this area of patent law. In 2024, Patexia named PV Law LLP as a Top 100 Most Active Law Firm and a Top 100 Best Performing Law Firm for PTAB proceedings. In 2023, Patexia named PV Law LLP as a Top 50 Most Active Law Firm and a Top 100 Best Performing Law Firm for PTAB proceedings. In addition, individual members of our team have been recognized by Patexia as the Top 250 Most Active Attorneys and Top 250 Best Performing Attorneys for the PTAB proceedings in 2024 and 2023.
Inter Partes Review
Inter Partes Review is an administrative proceeding before the PTAB challenging the validity of a patent under 35 U.S.C. § 102 or § 103 (i.e., anticipation or obviousness) based on prior art. However, the prior art that may be used in these proceedings is limited to patents or other printed publications. For an inter partes review to be instituted, the petitioner must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim. The owner of the patent has three months after the PTAB issues a notice that a filing date for the petition has been granted to file a preliminary response to the petition. The PTAB then has three months to decide whether to institute review. If the proceedings are instituted, the PTAB will have one year from institution to adjudicate the matter.
During the pendency of this proceeding, concurrent patent litigation in the Federal District Court may be stayed.
Can The Parties Involved In An Inter Partes Review Settle?
Parties involved in an Inter Partes Review (IPR) can and often do settle. If a settlement is reached, the parties involved must file a written agreement with the PTAB, along with a copy of the settlement agreement, which then typically leads to the termination of the review. At PV Law LLP, we will guide you through the negotiation and settlement process.
Can A Final Inter Partes Review Be Appealed?
After the conclusion of an inter partes review, you usually can appeal the final written decision by the PTAB. Parties wishing to challenge the PTAB’s decision can appeal to the United States Court of Appeals for the Federal Circuit. This appeal must be filed within a specific timeframe following the decision. The Federal Circuit reviews the administrative record established in the PTAB’s proceedings and considers legal arguments from both parties before issuing a decision.
At PV Law LLP, our seasoned attorneys, with our deep industry experience and technical knowledge, stand ready to represent clients throughout the appellate process, ensuring meticulous preparation and strong advocacy during the appellate process.
Sophisticated And Effective Representation
No matter the challenge, our team of attorneys has the skills to take on any intellectual property dispute for our clients. Our Washington, D.C., office is positioned perfectly to assist our clients and swiftly handle matters for them.