Patent IPRs and USPTO Proceedings Attorney
Inter partes review (IPR) procedures allow challenges to a patent after approval from the United States Patent and Trademark Office (USPTO). Since 2012, IPRs have been one of the most common types of post-grant proceedings. Additionally, they are considered a more efficient way to challenge a patent rather than heading to the federal courtroom. At BOAG Law, we bring our wealth of knowledge and experience when you need to file IPR as a petitioner or answer one as a patent owner.
What Is a Patent Inter Partes Review (IPR)?
When a third party has alleged the invalidity of an issued patent, the inter partes review is one way to challenge it. These interested parties must petition the USPTO to challenge one or more patent claims. With that, the petitioner needs to show there is a “reasonable likelihood” that these challenges are valid.
If the USPTO believes that the petitioner’s challenges are valid, an IPR proceeding initiates, where the petitioner and patent owner will engage in a formal review process. At this point, the patent owner must respond to the petitioner’s claims and offer a response. These oral arguments take place before the USPTO’s panel of administrative judges.
At the conclusion, the USPTO will make a final decision: either invalidate the challenger’s claims of the petitioner or uphold the patent. The patent owner can appeal to the Federal Circuit Court of Appeals if a patent is deemed invalid.
The IPR is a shortened litigation process, with only a limited number of motions and discovery. An IPR process must be completed within 12 months, with an additional extension for good cause. If there are multiple proceedings on the patent, they may be stayed, consolidated, or subjected to the joinder of the parties. In some cases, there is also a settlement option, which will terminate the proceeding without prejudice.
You Need an Experienced Patent Law Attorney for All USPTO Proceedings
While a party can represent themselves in an IPR proceeding, you will want an attorney with experience in patent law to navigate the complex legal and technical issues involved in these cases.
An experienced patent attorney can help develop a strategic approach to the IPR, including identifying the most substantial grounds for invalidating the challenged patent claims or presenting them in the most effective way. The IPR process involves filing a petition, responses, and other legal documents, which must comply with strict formatting and content requirements.
An attorney can ensure these documents are properly prepared and submitted on time. If the USPTO decides to hold oral arguments, an attorney can represent the party in front of the panel of administrative judges, responding to all questions from them.
While a party can represent themselves in an IPR, patent law’s highly technical and complex nature makes it advisable to have an experienced attorney who understands the law and this process.
Reach Out to BOAG Law Today
Any IPR or USPTO proceedings require help from a skilled and knowledgeable patent law team. Whether you are a patent owner or petitioner, we will handle your case from the start to the end.
If you would like more information about IPR or other USPTO proceedings and how we can help, contact our offices online or call us at 212-203-6651 to schedule an appointment. We are available for in-office consultations or videoconferencing.