Petitioners versus patent owners: the balance of power
Since the very first Patent Trial and Appeal Board (PTAB) trial, some aggrieved parties and commentators have criticised the fairness of the trials. These criticisms have been made mostly by patent owners, who generally prefer to have patentability issues settled in court. This article will address fairness issues that are more applicable to the petitioner.
The US Patent and Trademark Office (USPTO) rules indicate that the laws governing PTAB trials “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding”. The Administrative Procedures Act (APA) also imposes certain procedural requirements, including timely notice of “the matters of fact and law asserted” and an opportunity to submit facts and argument.
This article summarises some of the perceived fairness issues in PTAB proceedings, reviews whether the rules are fair, and evaluates whether the PTAB fairly applies the rules.
Stage-by-stage fairness issues
Petition
A petitioner is not usually in a position to complain about the fairness of the PTAB rules when the petition is filed, as the petitioner is a voluntary participant in the proceeding. It is possible that the word limits in the petition may be unfair. However, the constraints of the word limits can be avoided by drafting a more focused petition or by filing multiple petitions directed to different claims or different grounds.
