PTAB changes prompt a new strategy for patent owners

The updates to America Invents Act rules have levelled the evidentiary playing field for patent owners—so what will they do now, asks Frank Bernstein of Squire Patton Boggs.

On December 9, 2020, the US Patent and Trademark Office (USPTO) published some final rules in the Federal Register, relating to proceedings under the America Invents Act (AIA). For the most part, these rules codified existing Patent Trial and Appeal Board (PTAB) practice relating to whether and how the PTAB institutes an inter partes review (IPR) or a post-grant review (PGR) proceeding, and to the ability of a petitioner and a patent owner to address a PTAB decision on institution.

In one area, the USPTO amended the rules of practice to change PTAB treatment of testimonial evidence that a patent owner might present in a preliminary response prior to a decision on institution. Now, there will be no presumption in favour of the petitioner if the patent owner’s pre-institution testimonial evidence presents an issue of fact. Instead, the PTAB will consider the totality of the evidence in deciding whether to institute a proceeding.

The amended rules provide consistency of treatment of contrary evidence that a patent owner might present prior to institution of an IPR or PGR proceeding. In addition, the amended rules may make patent owners more willing to present testimonial evidence to oppose institution of an IPR or a PGR.