Inside Counsel
Inter partes review (IPR) is the most popular post-grant proceeding established by the America Invents Act of 2011. Intended as an alternative to civil litigation, an IPR proceeding is a trial-like procedure for challenging U.S. patents before a three-judge panel of the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). But unlike civil litigation, a petitioner in an IPR proceeding may only challenge the patentability of an original claim based "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."
The PTAB has emphasized that it cannot institute an IPR proceeding based on other proposed grounds for rejection, such as indefiniteness under 35 U.S.C. § 112. However, the reality is that indefiniteness has been a factor during claim construction. In this article, Finnegan attorney Anthony A. Hartmann discusses indefiniteness in IPR proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
