IPR: histrionics and statistics


Charles Shifley

IPR: histrionics and statistics

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Depending on where you sit, inter partes review purges bad patents and stops ‘trolls’, or discards good patents by testing them not for what they are, but what they are not. Charles Shifley of Banner & Witcoff sheds some light on the controversy.

Everyone involved in patent practice in the US knows that all US patents can be subject to inter partes review (IPR). Administrative patent judges at the Patent Trial and Appeal Board (PTAB) are empowered to consider IPR petitions, evaluate the petitions and responses, and cancel the contested patents.

They do this free of any requirements to consult juries or respect the job of patent examiners by giving the patents the benefit of the doubt, ie, a presumption of validity. Moreover, they read the patent claims as broadly as reasonably possible to validate or invalidate them (with broadest reasonable interpretation, and it applies with exceptions only for expiring patents and means-plus-function claim elements).

Are IPRs fair? It depends very much on who you ask. 

Charles Shifley, Banner & Witcoff, US Patent and Trademark Office, IPR, patent, patent trolls, Patent Trial and Appeal Board, America Invents Act,