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ARTICLE · 23 JULY 2015

Attacking Patents On Written Description & Enablement Grounds In Inter Partes Review

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Although Inter Partes Review (IPR) is limited to grounds of unpatentability based upon prior art references, it is nevertheless possible to raise issues of written description or enablement...

United StatesIntellectual Property
Stephen Maebius
Stephen Maebius
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Although Inter Partes Review (IPR) is limited to grounds of unpatentability based upon prior art references, it is nevertheless possible to raise issues of written description or enablement by applying intervening prior art that is published between two priority dates for a claimed invention. Such intervening prior art may even be applied between two filing dates created by a continuation application, even though no new material has been introduced into the application with the later filing date. In re NTP, 654 F.3d 1279 (Fed. Cir. 2011). The Board has specifically held that entitlement to priority is appropriately determined in the context of an IPR. See IPR2013-00323, paper no. 62, citing In re NTP.

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