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Basics of an Inter Partes Review Petition

By Eugene T. Perez

Inter partes review (IPR) is governed by the USPTO rules set forth in 37 C.F.R. §§ 42.100 – 42.123. When filing a petition for IPR, the following have to accompany the petition:

  • The government of the fee as established by the Director under 35 U.S.C. § 321 (which is $9,000 for 20 claims or less);
  • Identification of all real parties in interest;
  • With particularity identify for each claim challenged the grounds on which the challenge to each claim is based (e.g., unpatentable for obviousness and thus the claim should be canceled), and the evidence that supports the grounds for the challenge to each claim, including:

(A) Copies of patents and printed publications that the petitioner relies upon in support of the petition and

(B) Affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.

      • Any other information as the Director may require by regulation;
      • Copies of any of the documents required under paragraphs (2), (3), and (4) of 35 U.S.C. 312(a) sent to the patent owner or, if applicable, the designated representative of the patent owner.

In identifying each claim that is challenged the grounds on which the challenge to each claim is based, any number of affidavits/declarations can be submitted with the IPR petition.  For instance, a declaration can be submitted that explained one or more prior art references.  And/or, a declaration can be submitted explaining the state of the art.  Further, a proper claim construction should be given to the disputed patent claims.

More information on IPR, as well as post-grant review (PGR) and the transitional post-grant program for covered business method patents can be found in Final USPTO Rules (Federal Register, Vol. 77, No. 157, August 14, 2012). More information on the Patent Trial and Appeal Board procedure can be found in the Rules of Practice before PTAB (Federal Register, Vol. 77, No. 27, February 9, 2012).