Earlier this year, the USPTO released a set of ‘quick fixes‘ to AIA trial procedures before the Patent Trial and Appeal Board (PTAB) and also promised second package of rule changes. That second package has now been detailed in the USPTO’s Proposed Rule Changes now found in the Federal Register. The proposed rules focus on a number of practical changes to PTAB Trial Procedures:
- Testimonial Evidence (Such as Expert Declarations) in Patent Owner’s Preliminary Response (to be considered but viewed in the light most favorable to the petitioner when determining whether to institute an inter partes review proceeding)
- Claim construction standards for patents about to expire (use actual construction for patents that “will expire” before final judgment rather than broadest-reasonable-interpretation)
- Rule-11 Requirement associated with all papers filed with the PTAB – giving the USPTO “a more robust means with which to police misconduct.”
In her blog-post on the topic, USPTO Director Michelle Lee indicated that the USPTO will also “amend its Office Patent Trial Practice Guide to reflect developments in practice before the Office concerning how the Office handles additional discovery, live testimony, and confidential information.”
As part of the process, Director Lee also offers a “where we stand” set of statistics for the past three years of AIA filings:
- 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
- 63% focus on patents from electrical/computer technology centers (TCs) and only 9% in the the bio/pharma TC.
- Review Institution: Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
- Trial results: 12% of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable. Of the first IPRs to reach a conclusion, 25% of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
According to Director Lee, the number of petitions is “around three times more” than what were originally expected by Director Kappos.
These statistics fit with those discussed by Richard Bone in his recent post.
Comments on the proposed rules go to trialrules2015@uspto.gov and discussions will be held at the upcoming roadshows: August 24, 2015 in Santa Clara, August 26, 2015 in Dallas, and August 28, 2015 at USPTO HQ.
The Federal Circuit has issued Rule 36 affirmances in cases where the petitioner has introduced new evidence and arguments in its reply — to which the patent owner has no opportunity to respond, and in cases where the Board adopted a “new” claim constructions in it Final Decision adverse to the patent owner. I can only assume the reason for this is that the Feds did not believe that hearing from the patent owner was necessary for due process purposes, and the best way to shut these folks up, the guys with the patents, is to totally ignore them.
>>found to be unpatentable.
In any world where ethics and decency matter, shouldn’t the statistic include claims that are canceled? The smoke machines are on full power to save the IPRs from Congress reform. Shameful that a director of the PTO would not try to present statistics that are more transparent. Simply shameful. It illustrates that she is a politician and not a director of an agency.
For example, one of the statistics is that “[t]rials have been instituted on 1,389 of 3,277 IPR petitions.” That statistic was doubtless included to imply that the PTAB has a low (42%) rate of IPR trial institution, which is misleading. The actual institution rate is considerably higher. That particular statistic compares the number of trial-instituted IPRs against the TOTAL number of IPR petitions ever filed, including the 1,000 recently-filed petitions that have not yet resulted in the six-month institution decision. The PGR statistic (2/10) is based on the same distortion.
Good to point that out – Thanks!
Lode_Runner: great point. I didn’t have time to pick through Lee’s nonsense.
The presentation of these statistics should be enough to have her removed. She clearly is not acting in the interest of the public but her former employer.
Query whether the apparent inability to make meaningful changes to processes like amendments and stays in favor of reexamination or reissue, both of which have been the subject of Hill debate, will backfire on the Office by slowing down the Congressional process to achieve greater fairness and less abuse in those rules?
Amazing that they would go so far as to admit that the Board doesn’t even have to correct “minor defects” in amendment, which would otherwise invalidate the patent, if they don’t feel it’s in the “interests of the time limits”, apparently forgetting they are allowed an additional 6 months for just such matters.
Trial results: 12% of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable. Of the first IPRs to reach a conclusion, 25% of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
There’s an excellent way to hide the actual unpatentable rate.
Dennis, is there an anticipated date when these new rules/amendments would go into effect?
Well, it looks like the PTAB PR damage control machine is in full swing.
“IPR is good for you, now take your medicine!”
Just remember folks, our paternal oligarch overlords have your interests in mind!
If the PTO had to refund issue and maintenance fees paid for patents found to be invalid, then this would change substantially.
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