Inter Partes Review (IPR)
The IPR may be requested by a third party, but that party must identify itself as a real party in interest and set forth the pertinency and manner of applying the cited prior art to every claim for which the review is requested. The IPR is available for any unexpired patent that has been issued for more than nine months, and is not undergoing the PGR. The standard for initiating the IPR, i.e., that there is a “reasonable likelihood that at least one of the claims challenged in the petition is unpatentable,” is more stringent than the standard for granting the EPR request. The IPR has the 50/50 chance of at least one of the claims invalidated. In the IPR, the third party requester may submit declarations of supporting evidence and opinions, and additionally has a right to an oral hearing. Limited discovery is available regarding evidence “directly related to factual assertions advanced by either party.” Both parties will also have the opportunity to appeal any adverse final decision. Although limited to challenges based on novelty and obviousness over patents and printed publications previously not considered, the IPR is a highly valuable alternative to expensive litigation.
Cardinal can help you with any of the following in preparing the request for the IPR:
- Monitor your competition and identify competitor patents as they issue
- Invalidity Search and Analysis on issued claims, identify most relevant art and provide the pertinency and manner of applying the cited prior art to every claim for which the review is requested
- In compliance with Regulatory and Statutory Requirements, assist in preparing IPR documents including:
- Statement pointing out each substantial new question of patentability based on prior art and identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.
- Document list identifying the publications being submitted
- Legible copy of each identified documents (excluding U.S. patents/publications)
- English language translations for foreign language references
- Assist in IPR Submissions or Third-Party IPR Submissions