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13 April 2016Patents

IPR decisions increasingly balanced, study finds

Certain decisions by the Patent Trial and Appeal Board (PTAB) last year were broadly balanced despite initial reports which suggested a “dire situation for patent owners”.

This is the finding of law firm Fitzpatrick, Cella, Harper & Scinto in its second annual report detailing decisions made by the PTAB.

The study found that 40% of patent claims challenged in the inter partes review (IPR) proceedings survived scrutiny in 2015. In contrast, in 2014, 73.5% of challenges to existing patents under the IPR were successful.

Introduced as part of the America Invents Act in 2013, the IPR enables parties to challenge the validity of existing patents without going to court.

Additionally, the study found, last year only around 15% of patent claims withstood challenges under the covered business method (CBM) review process.

This higher rate of unpatentability derives partly from the US Supreme Court’s decision in Alice v CLS Bank, which made it more difficult to obtain protection for business method patents, according to the study.

“The data shows that CBM decisions are significantly more likely to strike down claims under Alice-type challenges than on prior art challenges,” it explained.

The firm also included cases in which the PTAB decided not to institute proceedings. The PTAB declined to institute 13.5% of IPR cases in 2013, climbing to 25.8% in 2014 and 34.7% in 2015.

“With this new, more accurate methodology, we’ve shown that, while PTAB proceedings still favour challengers, they do not have as significant an advantage as previously thought,” said Justin Oliver, partner at Fitzpatrick.

“In fact, the results indicate PTAB proceedings are more comparable to the European Patent Office’s opposition procedure and, on certain issues, district court litigation.”

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18 June 2015   Scott Kamholz, a former judge at the Patent Trial and Appeal Board, recently returned to law firm Foley Hoag as partner. LSIPR spoke to him at this year’s BIO International Convention, where he explained why the inter-partes review is not a “death squad” for patents.