Who can file inter partes review?

An inter partes review of a patent is a type of administrative trial proceeding. Inter partes review became available in 2012 and replaced inter partes reexamination as a way to challenge patentability at the Patent Office. Any person who is not the owner of a patent can file a petition for a review of a patent.

What is a petition for inter partes review?

Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

Does inter partes reexamination still exist?

Inter partes reexamination is no longer available (last day, Sept. 15, 2012) at the USPTO. Instead, a challenger may now seek inter partes review (IPR), which is applicable to all issued patents. IPR may be requested any time that is nine months after the patent has issued.

How do I file a petition for IPR?

A petition for IPR must contain the following information:

  1. The grounds for standing;
  2. An identification of all claims challenged and all grounds on which the challenge to each claim is based;
  3. A claim construction for each challenged claim;
  4. A specific explanation of the grounds for unpatentability;

What is inter partes correspondence?

Strictly speaking inter partes correspondence is any correspondence between the parties (or their solicitors if solicitors are appointed) once the current legal proceedings are intimated, so it covers letters before action and other pre-action correspondence in the run-up to the formal start of legal proceedings.

When can ex parte reexamination be filed?

A request for ex parte reexamination can be filed at any time after a patent is granted and up to six years after it expires (a case-by-case determination may result in longer or shorter applicable time periods).

How long does ex parte reexamination take?

The second Office Action in the reexamination proceedings is made final. The CRU has an internal goal of issuing a Final Office Action within two years from the filing date of the request. The period for response to a final rejection is usually two months, but it can be shortened to one month.

What is inter partes proceedings trademark?

– Inter Partes Proceedings is essentially an administrative proceedings. Hence, the quantum of evidence required is substantial evidence. The Bureau shall decide the case on the basis of the pleadings, the records and the evidence submitted, and if appropriate, on matters which may be taken up by judicial notice.