WIPR survey: Readers welcome PTAB proposals
The US Patent and Trademark Office’s (USPTO) suggestions on how to improve trial proceedings at the Patent Trial and Appeal Board (PTAB) will have the desired effect, readers have said.
In a unanimous decision, 100% of respondents said the proposals would improve how the PTAB conducts trials.
Earlier this month, WIPR asked whether the draft proposals , published on August 19, would improve trials at the PTAB.
The USPTO’s proposals include allowing patent owners to submit expert evidence to an examiner before he or she decides whether to institute an inter partes review (IPR).
Other proposals include requiring practitioners to submit, before filing an IPR, a pleading that its petition is not abusive.
The pleading, according to the USPTO, will be similar to rule 11 requirements in federal courts.
Rule 11, one of several in the US’s federal rules of civil procedure, provides for sanctions against an attorney or its client for offences including harassment, making frivolous arguments, or not conducting a factual investigation.
According to the proposals, the PTAB will also construe patent claims in the same way as district courts for patents that are set to expire during an IPR. It will, however, continue to apply the broadest reasonable interpretation standard for all other cases it handles.
In district court litigation, claims cannot be amended and courts take a narrower view of them, looking at much more evidence such as prosecution history.
The USPTO followed up its proposals by announcing last week that it is also looking for responses to a pilot scheme that seeks to change the way judges rule on IPR disputes.
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 decide whether to institute an IPR. The same judges then determine the validity of the patent in the trial phase.
For this week’s survey we ask: “Last week we reported on street artist Banksy’s new ‘Dismaland’ exhibition, which alludes to Disney themes and characters. Do you think Disney has grounds to sue for IP infringement?”
