Mikele Bicolli
Jun 30, 2023

Exploring the Factors to Consider when Deciding between Reexamination and Inter Partes Review (IPR)

PTAB Litigation

In the world of patent law, challenging the validity of a patent is an important process that allows for the examination of its claims and potential infringement issues. Two common methods used for patent validity challenges are reexamination and inter partes review (IPR). Both processes have distinct features and considerations that patent holders and challengers must evaluate before proceeding. This article delves into the factors to consider when deciding between reexamination and IPR, shedding light on their key differences and implications.

Nature of the Challenge:
Reexamination involves a reevaluation of the patent's validity by the U.S. Patent and Trademark Office (USPTO) based on prior art, including patents, publications, and other relevant information. On the other hand, IPR is an adversarial proceeding before the Patent Trial and Appeal Board (PTAB), where a petitioner challenges the patent's claims using prior art. Consider the nature of your challenge and the level of adversarial process you are comfortable with.

Scope of Review:
Reexamination offers a broader scope of review, considering any grounds for patent invalidity, including novelty, obviousness, and written description. In contrast, IPR limits the scope of review to novelty and obviousness based on patents and printed publications only. Evaluate the extent of review you seek and the specific grounds for challenging the patent's validity.

Timing and Deadlines:
Timing plays a crucial role in patent challenges. Reexamination can be requested at any time during the patent's enforceable period, while IPR must be filed within nine months from the patent's issuance or the date of termination of a post-grant review. Consider the timing constraints and deadlines associated with each process and ensure compliance to preserve your rights.

Cost Considerations:
Both reexamination and IPR involve costs, including attorney fees, filing fees, and expert witness expenses. Reexamination generally tends to be less expensive compared to IPR, making it a viable option for budget-conscious parties. Evaluate your budget and cost constraints when choosing between the two processes.

Discovery and Procedural Differences:
IPR allows for limited discovery, including depositions, while reexamination does not provide the same level of discovery. Additionally, IPR follows strict procedural guidelines set by the PTAB, involving petition, preliminary response, and oral hearing stages. Assess the importance of discovery and the procedural framework that aligns with your objectives.

Burden of Proof and Presumption of Validity:
In reexamination, the challenger must prove the patent's invalidity by a preponderance of the evidence, while in IPR, the burden of proof lies with the petitioner to demonstrate that it is more likely than not that at least one claim is unpatentable. Consider the burden of proof and the impact it may have on your case.

When it comes to challenging the validity of a patent, selecting the appropriate process is crucial. Understanding the factors to consider between reexamination and inter partes review (IPR) is essential for making an informed decision. Evaluating the nature of the challenge, scope of review, timing, cost considerations, discovery, procedural differences, burden of proof, and presumption of validity will help guide patent holders and challengers in determining the most suitable path forward. Consulting with an experienced patent attorney is highly recommended to navigate the complexities of these processes and make the best decision based on your unique circumstances.