Impressions on the new (post AIA) Patent Trial and Appeal Board (PTAB) patent trial format

USPTO PTAB IPR reviews
Gavel

PTAB:  The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.

The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed.  The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise).  It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak.   Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.

The USPTO had and continues to have a low budget process to challenge an issued patent, called an Ex-Parte Reexamination. Here the challenger essentially writes their own office action challenging a patent as being not novel or obvious in view of some new prior art citations. This process is very inexpensive but only allows a challenger one time “at bat”. No further challenger comments or rebuttals are allowed. So it is a more limited type of challenge.

The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process.  The US version is called an “Inter Partes Review” (IPR). The USPTO has been hosting roundtables to show their progress to date and solicit feedback.  I attended one of their roundtables at Santa Clara University and came away favorably impressed.  The present rules are here:

In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process.  Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.

Conventional patent trials are so complex that typically they are handled by expert litigation attorneys.  These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology.  By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.

PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome.  In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions. At the same time, relative to standard trials, the PTAB approach appears to be relatively simple. There is only one forum (even for Indian tribes), and certain procedural rules are clearly defined.

With some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology), as well as litigation attorneys, should be able to handle PTAB IPR.

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