Inter partes review cancels a patent claim only at the end

The record

Inter partes review (IPR) is a trial proceeding before the USPTO's Patent Trial and Appeal Board (PTAB), created by the Leahy-Smith America Invents Act (AIA). The USPTO's own Inter Partes Review page states “the procedure for conducting inter partes review took effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.” Under the codified statute, 35 U.S.C. Section 311, a person who is not the patent's owner may petition to cancel claims “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications,” filed only after the later of nine months from grant or, if a post-grant review was instituted, that review's termination. Section 311 was amended by Public Law 112-29, Section 6(a), enacted 16 September 2011 — one year before the IPR procedure took effect.

What the documents establish

The USPTO's page states the operative sequence: the patent owner “may file a preliminary response,” the Board may institute review only “upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged,” and if instituted and not dismissed, “a final determination by the Board will be issued within 1 year,” extendable for good cause by six months. Nothing in the statute or the USPTO's description treats a filed petition, by itself, as affecting validity; validity is unchanged unless the Board issues a final written decision following institution. The one-year gap between the AIA's 2011 enactment and the IPR procedure's 2012 effective date reflects the statute's own delayed-effectiveness provision, not separate rulemaking.

The operating read

A company evaluating patent risk, as a potential IPR petitioner or as a patent owner facing one, should treat the stages as separate decision points: a filed petition is only a request, institution is a preliminary finding under a “reasonable likelihood” standard, and only a final written decision cancels a claim. Because the petition deadline runs from the later of nine months after grant or a related post-grant review's termination, a company should confirm which deadline applies to its target patent before assuming a window is open or closed. This is an editorial reading of the procedural stages the statute and USPTO materials describe, not advice about any dispute.

What to check before you decide

Before treating an inter partes review as resolved either way, check the following against the proceeding's docket.

• Has the Board actually issued a final written decision, or only a decision on institution, since only the former affects claim validity?
• Does the challenged patent's grant date and any related post-grant review's termination date place the petition within the statutory filing window under Section 311(c)?
• Is the petition's ground actually limited to Section 102 or 103 prior art consisting of patents or printed publications, since other invalidity grounds are outside IPR's scope?

Because IPR outcomes can be appealed to the Federal Circuit, the docket's current posture, available through the USPTO's own systems, is the primary record to check before relying on any result as final.