Inter partes review

An inter partes review (IPR) is a procedure for challenging the validity of a United States patent before the United States Patent and Trademark Office. The procedure is conducted by the Patent Trial and Appeal Board (PTAB).[1]

History

The inter partes review was enacted on September 16, 2012 as part of the America Invents Act.[2] The new inter partes review procedure replaced a previous review procedure called inter partes reexamination.

Scope

An inter partes review is used to challenge the patentability of one or more claims in a U.S. patent only on a ground that could be raised under 35 U.S.C. §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.[3]

Controversy

The inter partes review process has come under scrutiny. In 2016, the Supreme Court will hear challenges to the inter partes review process in Cuozzo Speed Tech v. Lee. The main issues in that case include whether it is appropriate for the PTAB to "construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning," as is the custom in courts and whether the PTAB's "statutory authority in instituting an IPR proceeding" should be subject to judicial review.[4]

Other critics have cited instances where individuals or firms have abused the inter partes review process to effect an advantageous change in the market, for personal gain. For example, Kyle Bass, who manages the Coalition for Affordable Drugs (CFAD), challenged the validity of 28 pharmaceutical corporations' patents through the inter partes review process, claiming that he wanted to invalidate weak patents imposing costs on consumers, thus making more affordable the drugs protected by those patents.[5] The drug companies targeted by Bass allege that the sole purpose of the validity challenges was to allow Bass to short the market and thus profit from the change in companies' stock prices.[6] However, at least one event study indicates that if Bass had in fact pursued such a strategy, he could not have profited, because his "petitions for inter partes review . . . did not consistently produce statistically significant negative returns in the patent holders' share prices."[7]

See also

References

  1. ↑ "Inter Partes Disputes". USPTO. Retrieved 31 January 2015.
  2. ↑ "America Invents Act (AIA) Frequently Asked Questions". USPTO. Retrieved 5 April 2015.
  3. ↑ "Inter Partes Review". USPTO. Retrieved 5 April 2015.
  4. ↑ http://patentlyo.com/patent/2016/01/certiorari-challenge-proceedings.html.
  5. ↑ Andrew Ward, Kyle Bass Plans Legal Action on Pharma Patents, FIN. TIMES (Jan. 7, 2015, 7:44 PM), http://www.ft.com/intl/cms/s/0/a2a706a0-969c-11e4-922f-00144feabdc0.html#axzz3hUceI91O.
  6. ↑ Susan Decker, Drugmakers Strike Back: Bass Blasted Over Patent Challenge, BLOOMBERGBUSINESS (July 30, 2015, 12:15 PM), http://www.bloomberg.com/news/articles/2015-07-29/drugmakers-strike-back-kyle-bass-blasted-over-patent-challenges.
  7. ↑ J. Gregory Sidak, Attack of the Shorting Bass: Does the Inter Partes Review Process Enable Petitioners to Earn Abnormal Returns, 63 UCLA L. Rev. Disc. 120, 150 (2015), https://www.criterioneconomics.com/kyle-bass-inter-partes-reviews-of-patent-validity.html.
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