AIPLA 2018: A ‘new day’ for the PTAB, says Iancu
“It is a new day at the Patent Trial and Appeal Board (PTAB),” claimed Andrei Iancu, director of the US Patent and Trademark Office (USPTO), yesterday.
Iancu, who was delivering the keynote speech at the 2018 AIPLA Annual Meeting in Washington, DC, announced that, in the next few days, the USPTO will publish a notice seeking comments on a new claim amendment process for post-grant proceedings.
“I believe that the current amendment process in America Invents Act (AIA) proceedings is not working as intended,” said Iancu.
He added that last year, the US Court of Appeals for the Federal Circuit in its Aqua Products decision noted: “Despite repeated recognition of the importance of the patent owner’s right to amend during inter partes review (IPR) proceedings … patent owners largely have been prevented from amending claims in the context of IPRs.”
Claim amendments have been relatively rare, added Iancu, stating that they are filed in less than 10% of AIA trials and are granted infrequently.
“But the AIA statute specifically provides for claim amendments in IPRs, so in order to fully implement the intent of the AIA, we must find a way to make this amendment process feasible and meaningful,” Iancu went on to say.
The suggested amendment process should allow patent owners a “meaningful opportunity” to draft narrower claims, while also providing for input from the petitioner and the PTAB, so that appropriately-scoped claims can be drafted in light of the prior art and arguments presented.
Iancu also referred to the USPTO’s recent (October 11) publication of the final rule for claim construction in AIA proceedings. The Phillips claim construction rule will replace the “broadest reasonable interpretation” standard and apply to all petitions filed on or after November 13, 2018.
“Looking at the patent system holistically, this is a critically important rule change,” said Iancu. “For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyse it.”
Approximately 85% of patents contested at the PTAB are involved in parallel litigation, Iancu said.
But, while the change has been met with widespread support, a few have not been pleased and have suggested that it will make it easier to preserve what they call “low-quality patents”, Iancu said.
But in rebutting this view, he added: “That’s curious, because all we did was to say that we will use the same standard currently used by district courts and the International Trade Commission, and that has been used in countless court proceedings for many years to date.”
He added that there is no reason for the USPTO to be using a claim construction standard that eliminates patents which would otherwise survive challenge in district courts.
“Doing so is an example of what I have referred to as an over-correction that risks throwing out the baby with the bathwater,” said Iancu.
In addition to updating the trial practice guide in August, the office published two new standard operating procedures (SOPs) for the PTAB in September.
The SOPs relate to the assignment of judges to panels at the PTAB and create a precedential opinion panel which will set out binding policy.
The panel will typical comprise of Iancu, the USPTO’s commissioner for patents Drew Hirshfeld, and the chief judge for the PTAB, Scott Boalick.
“This panel will enable top agency management to address some of the thorniest issues that come to us and to instil consistency throughout the agency,” explained Iancu.
The SOPs also outline the requirements for designating a decision as precedential, which Iancu said would “address concerns about consistent guidance for practice”.
To date, the board has averaged “only a handful” of precedential opinions each year. In comparison, the Trademark Trial and Appeal Board (TTAB) “designates significantly more precedential opinions, despite a much smaller docket”, said Iancu.
“I am not suggesting that the PTAB should necessarily designate as many precedential decisions as the TTAB, but, to increase consistency at the PTAB, something more than the current mere handful seems in order,” he said.
Overall, with the introduction of new trial practice, new procedures and an aligned claim construction standard, “it is indeed a new day at the PTAB”, concluded Iancu.
The 2018 AIPLA Annual Meeting finishes today, October 26.
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