PTAB: The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality. The AIA allowed potentially invalid patents to be challenged in new types of post-grant opposition procedures.
Problems with the European patent opposition process
The Europeans have had a patent opposition process for years. 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. The opposition can be done in a language that 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. They only “justify” the decisions in writing months later.
USPTO low-budget methods of challenging patents
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. They can challenge 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.
Improving on European patent oppositions
The USPTO Patent Trial and Appeal Board (PTAB) decided to implement an American version of the opposition process. The US version is called an “Inter Partes Review” (IPR). The USPTO hosted roundtables to show the system and solicit feedback. I attended one of their roundtables at Santa Clara University and came away favorably impressed. The present rules are here:
It would be good to bring in more of the legal protections of common law/Federal law rules of evidence, and civil procedure. This would improve on the European system. Ideally the PTAB system should also minimize the burdens of a conventional trial process. This is because conventional patent trials have high costs and long delay times. It would also be good to open the process up to a wider range of attorneys.
Problems with conventional patent trials
Conventional patent trials are so complex that they are typically handled by expert litigation attorneys. These litigation attorneys have a detailed knowledge of the trial process. But sometimes they have less knowledge of patent law and the underlying technology. By contrast, patents are usually prosecuted by patent attorneys. Patent attorneys often have a detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.
PTAB has attempted to devise a streamlined review system. Their system 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.
The streamlined rules allow patent attorneys to handle PTAB IPR. (Some review of the rules of evidence, civil procedure, and of course PTAB procedures needed, of course!) This is helpful. Here the attorney most knowledgeable about the patent and related technology can still be involved.