Changes may be coming to Patent Trial and Appeal Board (PTAB) proceedings. The United States Patent and Trademark Office (USPTO) announced recently that it is launching an initiative to reform PTAB proceeding rules. The announcement stated that the USPTO will use nearly five years of historical data and user experiences to improve PTAB trials. In addition to input already received, the USPTO is seeking feedback from the public (ideas for reforming PTAB proceedings can be submitted via email to PTABProceduralReformInitiative@uspto.gov).
Introduced on September 16, 2012, PTAB proceedings were aimed at providing an efficient quality check on issued patents. However, PTAB proceedings have been criticized for being unfavorable to patent owners, especially due to high rates of petition institution and claim invalidation, as well as the low success rate for motions to amend by patent owners.
Since their introduction, PTAB proceeding rules have undergone two rounds of revisions (see here and here) that brought patent-friendly rule changes, including:
- allowing patent owners the opportunity to submit new testimonial evidence with a preliminary response;
- allowing a Phillips-type claim construction standard (rather than a Broadest Reasonable Interpretation standard) if the patent will expire within 18 months after filing of the petition; and
- a new “Rule 11-type” certification guarding against submission of papers for any “improper purpose.”
For the current initiative, the USPTO intends to examine procedures relating to (but not limited to):
- motions to amend;
- claim construction; and
- decisions to institute.
The current initiative raises the possibility of further patent-friendly revisions to the PTAB proceeding rules. Nutter will continue to track future developments and the final rule changes. Any practitioners with desired rule changes should consider taking advantage of the above-noted email address for suggestions from the public.