Once something is patented, there is a window of opportunity to challenge that patent. This can be done through a process known as an Inter Partes Review, and whether you are the one making the challenge or you’re the one having your patent challenged, you’ll want to make sure that you have a clear case. An Orange County, California patent lawyer can help you with that.

What is Inter Partes Review?

An Inter Partes Review is a legal process that goes through the Patent Trial and Appeal Board. The PTAB allows someone to challenge the patentability of a claim or multiple claims at the same time. The main criterion for challenging a claim in this fashion is prior art.

Essentially, someone who calls for an Inter Partes Review is saying that something that has been patented shouldn’t have received that patent. Their primary argument is that they looked at prior art and determined that the new claim is not novel. This means that it should not have been patented.

How Does the Inter Partes Review Process Go?

An Inter Partes Review process begins when one person files a petition with the PTAB challenging a patent. The usual deadline is within nine months of the patent being awarded and their petition must look like it has some chance of succeeding. Here’s what happens after a petition is filed:

  • The petitioner makes it clear which claims they are challenging and which prior art they are using as evidence
  • The patent owner can respond and show why their claims should still be patented
  • The PTAB reviews the testimony of both parties
  • An Inter Partes Review can begin in earnest with a discovery process
  • Both parties make their final arguments
  • The PTAB makes a decision

What Tactics Should I Deploy During This Review?

Whether you are challenging a claim or having your patent challenged, there’s some good general advice to follow here.

Pick your battles: If you want to challenge claims, it’s best to only pick the ones where you have the best chance of winning with a prior art defense.

Argue your points clearly: Be ready to argue your side and have clear reasoning for why a challenge should be accepted or rejected.

Employ experts when possible: If you are working in a specialized field, having expert witnesses weigh in might be helpful.

Will I Have to Go to Court?

No, but you can have a lawyer help you out whether you are challenging a claim or having your claim challenged. The Inter Partes Review exists to give people an alternative to traditional litigation. It’s supposed to be quicker and less expensive, but the main tradeoff here is that challenging based on prior art is the only option. If you have another reason to challenge someone’s claim, then you need to go to court.

Talk to a Patent Lawyer Today

If you have questions about challenging a claim or your own patent has been challenged, talk to someone who knows this review process well. Contact Burns Patent Law and schedule a consultation with our team today.