The PATENT Act that was
approved by the US Senate Judiciary Committee last week and
which will be reported to the full Senate looks very different
to that which was
introduced in in April.
As Oblon partner Scott McKeown noted in
a Patents Post-Grant blog post last week, the
PATENT Act "has morphed into a PTAB reform bill" in a
"surprising change of course".
Radical changes to the Patent Trial and Appeal Board had
been included in
the patent owner-friendly STRONG Act introduced in the
Senate in March. But that bill stands little chance of
The PATENT Act, by contrast, is more popular and has
bipartisan support. With the addition of changes to the PTAB,
it appears the bill is attempting to appease patent owners such
as pharmaceutical companies as well as appealing to the
technology industry with its previous provisions to shift fees,
curb abusive demand letters, increase transparency and limit
Some of the biggest PTAB changes in the
manager’s amendment include giving the USPTO
Director discretion to deny petitions "in the interest of
justice" (a provision surely aimed at Kyle Bass), stipulating
that a patent challenged in a proceeding "shall be presumed to
be valid", requiring the PTAB to ditch the broadest reasonable
interpretation standard and apply the narrower claim
construction followed by the district courts, and reducing the
burden on amending claims in PTAB proceedings.
Oblon's McKeown was especially scathing about the proposed
change to the Philips claim construction, noting that
"patentees will regret pushing for this change, if it happens".
He said the presumption of validity provision would "create
unnecessary confusion". He added that a provision to force
amendment within 30 days of trial institution was a "strange
idea" that would mean a patentee would not be able to depose
the petitioner’s expert.
In fairness, McKeown noted some of the changes seem sensible
such as an exception to the 12-month IPR window for amended
complaints that add new claims that would address a common
joinder situation and fixing CBM grounds to include 102(e).
Other provisions in the bill McKeown said are moot because
the PTAB is likely to make similar changes soon such as:
allowing preliminary responses to include evidence and allowing
petitioners to seek leave to reply; allowing live testimony;
providing the ability to amend as a matter if right if
narrowing, supported and responsive to trial ground; and
mandating only one judge in common with institution order and
final written decision.
All these changes would be prospective only. McKeown said
that were they to be enacted there would be "a
massive crush of filings" in the weeks before they were actice
to avoid uncertainty.
Harness Dickey included a
good overview of the proposed changes to the PTAB in the
PATENT Act on its http://ipr-pgr.com website.
There may be further tweaks to these proposals. The
bill’s co-sponsors admitted that the
manager’s amendment included "placeholder
language" for amending claims in PTAB proceedings.
"Negotiations are ongoing regarding this provision,"
they said in a statement.
Another issue is in regards to a proposal by the life
sciences community concerning the applicability of the PTAB
proceedings to patents that are subject to the Hatch-Waxman Act
and Biologics Price Competition and Innovation Act processes.
"The cosponsors have agreed to work on these issues as the bill
proceeds to the Senate floor," they said.
Only 30% of our content is published on our blog – to
access all of our content you need to be a subscriber.
We like to offer our loyal blog readers a special rate,
so register your
interest in coming on board as a subscriber
and we will be in touch shortly