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USPTO calls for feedback on PTAB judge pilot programme


  The US Patent and Trademark Office (USPTO) is considering changing the way judges rule on inter partes review petitions (IPR) filed at the Patent Trial and Appeal Board (PTAB).

  In a consultation launched on August 25, the USPTO said IPRs could be instituted by a single judge with an additional two judges then drafted in to determine the validity of the targeted patent.

  Under the current procedure, three administrative patent judges (APJs) decide whether to institute an IPR. The same judges then determine the validity of the patent in the trial phase.

  The USPTO is requesting that interested parties submit their views on the proposed scheme by October 26.

  In a statement introducing its proposal, the USPTO said: “The USPTO is considering a pilot programme under which the determination of whether to institute an IPR will be made by a single APJ, with two additional APJs being assigned to the IPR if a trial is instituted”.

  “Under the pilot programme, any IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR,” it added.

  Since the PTAB, which hears IPR petitions, was created in 2012, 1,777 IPRs have been filed, of which 827 were instituted.

  Once an IPR reaches a final written decision, in only 16% of cases have all patent claims survived, the USPTO said.

  Michael Cuviello, attorney at law firm Banner & Witcoff, said the programme “may be in response to a perception of bias in which the three-judge panel issuing a final written decision cancelling claims are potentially biased by their earlier decision to institute the trial, without fully considering all of the trial evidence and arguments”.

  He added: “The proposed programme raises an interesting situation if the trial is not instituted. However, the proposal does not address the situation when there is a decision not to institute a trial. Such a decision would ultimately rest with a single judge, which could raise arguments of perceived unfairness to the petitioner.”

  The latest consultation follows shortly after the USPTO proposed a number of other changes to the way the PTAB conducts IPRs.

  Among the key proposals is to allow a patent owner to introduce expert evidence supporting the validity of a patent before the PTAB institutes an IPR.

  The draft proposals, published on August 19, also said that the PTAB will not apply the broadest reasonable interpretation (BRI) standard when constructing the claims of a patent that is due to expire during trial proceedings.

  In such cases, the PTAB will apply the ‘Phillips standard’, which is usually applied by district courts when interpreting patent claims. The standard is a much narrower interpretation of claims than the BRI.

TypeInfo: Industry trends

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