Vidal unveils ‘important step’ for PTAB patent reviews
Proposed rules come amid scrutiny of boards application of the Fintiv rule that preclude an inter partes review in certain scenarios | Rules aim to refine existing practices governing the director Kathi Vidal’s discretionary powers.
The US Patent and Trademark Office (USPTO) has introduced proposed new rules for the Patent Trial and Appeal Board (PTAB) to apply when multiple challenges are made to a single patent, and improve its processes when denying challenges.
The USPTO sought public input on proposals to codify existing PTAB practices, and released them yesterday, April 18.
The board has long faced scrutiny over its application of the controversial Fintiv rule, introduced in 2020, the rule dictates that the existence of a parallel district court lawsuit should preclude an inter partes review (IPR), resulting in more denials of IPR petitions of patents over the ensuing two years.
Since then the rule has met with staunch opposition: most notably from big tech and pharma heavyweights including Apple, Edwards Life Sciences and Mylan.
All have filed petitions at the US Supreme Court, arguing that the rule compromises the integrity of the US patent system by protecting poor-quality patents. And all have been unsuccessful so far.
Clamour for clear guidance
As calls clarity grew, the need for better PTAB guidance climbed to the top of the USPTO’s priority list.
Commenting on the proposals, Kathi Vidal, under secretary of commerce and director of the USPTO, said: “The patent system works most efficiently and effectively when the USPTO issues and maintains robust and reliable patents upon which patent owners and the public can rely to invest in innovations and bring them to market, to commercialise ideas, to engage in technology transfer and licensing, and to enforce patent rights.”
The proposed rules aim to refine existing practices governing the director's discretion in determining whether to initiate an America Invent Act proceeding, particularly in cases involving serial petitions, parallel petitions, or petitions addressing similar art or arguments previously presented to the USPTO.
Notably, the rules aim to institute a briefing process for discretionary institution arguments and align pre-and post-institution procedures for terminating proceedings.
An important step
The proposed rules stem from feedback, including a 2020 request for comments which drew more than 820 responses, and a subsequent 2023 advanced notice of proposed rulemaking that generated a substantial 14,500 comments.
According to Vidal, the rules are “an important step” towards strengthening patent quality while reducing challenges and expenses.
Stakeholders and interested parties have until June 18, 2024, to submit their comments, which must be done in writing through the Federal eRulemaking Portal.
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