Is IPR (Inter Partes Review) a Better Way to Defend a Patent Infringement Lawsuit?

Inter Partes Review, or IPR, is a mini-trial held before the USPTO’s Patent and Trial Appeal Board (PTAB) to cancel specific claims of a patent on the grounds of invalidity – i.e., that the patent claims nothing new in view of the prior art. The timeframe, scope of discovery and costs of an IPR are significantly lesser than those of a patent infringement lawsuit in federal court, due to a combination of strict regulations and a sole focus on the (in)validity of the patent. Think of IPR as USPTO litigation to strike down some or all of a patent’s claims based on prior art.

If an accused infringer succeeds in canceling patent claims through an IPR, there may be little to nothing left to litigate in federal court. Even a partial IPR victory can significantly impact the corresponding federal court litigation as a result of fewer claims and/or legal positions taken during the IPR which may prevent a subsequent flip-flop by the patent owner in the federal case. In the vast majority of patent cases in district court, federal judges have willingly granted stays of the patent lawsuit pending the outcome of the IPR. It makes sense – why force the parties to expend significant resources to litigate in federal court a patent that may ultimately be invalidated?

A IPR petition may be filed by any person who is not the patent owner and who has not filed a civil lawsuit challenging the validity of the patent. As we’ll discuss separately, the key to a successful IPR petition lies in good prior art which results from an early and significant investment in thorough prior art searching.

IPR proceedings are available 9 months after the grant date for patents issued under the AIA first-to-file rules, and for all patents filed before the first-to-file rule took effect. A petition for IPR must be filed within one year from the date of service of a patent infringement complaint. The USPTO will take up to 6 months to decide whether or not to grant the IPR petition. If granted, the IPR proceeding will conclude in one year from the institution decision.

The final decision is rendered by three administrative PTAB judges with technical expertise.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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