Inter partes review (IPR) is a trial proceeding that was introduced by the America Invents Act (AIA). It became available for all patents on September 16, 2012, regardless of the priority date of the patents. This is a procedure that is conducted before the Patent Trial and Appeal Board (PTAB).
IPR allows a petitioner to challenge the patentability of one or more claims in a registered patent only on a ground that could be raised under Sections 102 (anticipation) or 103 (obviousness), and only on the basis of prior art consisting of patents or printed publications. The petitioner can institute an action after the later of either: 1) 9 months after the grant of the patent/issuance of a reissue patent; or 2) after the post grant review. These deadlines are not applicable to pre-AIA patents.
Since IPR became available, its popularity has grown exponentially, as shown in the chart below.
I also added a trend line here (shown in black) to project how many petitions we could be expecting in the years following.
I think IPR proceedings are popular among infringers, and more particularly among rational infringers (with deep pockets) who want to use IPRs defensively. This is not such a great news for small companies or start ups with limited funding. What could potentially happen is this:
Company A (a start up company) obtains a patent, and tries to enter into a licensing agreement with Company B (a large company). During negotiation, Company B decides not to enter into the licensing agreement with Company A, and instead makes a business decision to intentionally infringe upon the patent. (This is called rational infringement, which I will talk about next time). Then Company A sues Company B (in court) for patent infringement, and then Company B files an IPR petition in response to challenge the patent (in PTAB). In filing an IPR petition, Company B only needs to show that there is a reasonably likelihood that Company B would prevail.
The above scenario could result in Company B outspending Company A, leaving Company A with very little recourse to enforce its patent. (Remember, this is after Company A already spent time and money on registering the patent). As I said, this is not a great scenario for Company A. Even if Company B's petition was dismissed, Company A would have still had to deal with the infringement action. But it did play out pretty well, at least temporarily, for Company B (although in poor form).