On Wednesday August 19th, 2015, the U.S. Patent and Trademark Office (“USPTO”) announced in a blog post a number of proposed improvements to be made to Patent Trial and Appeal Board (“PTAB”) proceedings, particularly the three new kinds of post-issuance review proceedings that were created by the America Invents Act (AIA): inter partes review (IPR), post-grant review (PGR), and business method patents review (CBM).
The post outlines four key proposals:
- Allowing patent owners to respond with testimonial evidence such as expert declarations in their opposition to a petition. This change responds to criticism that patent owners are disadvantaged since they cannot respond to petitioners’ evidence before trial.
- Adding a rule akin to Rule 11 in the federal courts, which attorneys can be sanctioned for not doing an adequate pre-filing investigation, to help the USPTO police misconduct.
- Clarifying that the standard for claim construction is the “broadest reasonable interpretation standard” in all cases except in cases where patents will expire during proceedings and therefore cannot be amended. In which case the standard for claim construction is the “ordinary and customary meaning” standard.
- Noting the PTAB’s development of its own precedent regarding motions-to-amend, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof. [See Microsoft v Proxyconn]
The blog post also contained some interesting statistics regarding PTAB proceedings and claim invalidation. In the three years of proceedings, the PTAB received a total of 3,655 petitions, 3,277 of which were IPRs, 368 of which were CBMs, and 10 of which were PGRs. Of the first IPRs to reach a conclusion, 25% of the claims that were challenged were found to be unpatentable, and 12% of all claims that were available to be challenged were determined to be unpatentable.
The USPTO expressed that while they believe the current PTAB proceedings have been effective in providing a costly and timely alternative to district court proceedings, they recognize that improvements could be made, and promised that they will continue to consider and discuss further improvements to the process. The USPTO asks that commenters review the proposed rule package and submit their comments before October 19, 2015.