Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Phil Johnson calls for fairness in PTAB proceedings


In a session at the AIPLA Annual Meeting, David Kappos said that Federal Circuit decisions will show whether the Patent and Trial Appeal Board (PTAB) is on the right track while Phil Johnson stressed that the proceedings must be perceived as fair

Kappos, partner at Cravath Swaine & Moore, and former director of the USPTO, praised the job the PTAB has done in keeping up with its higher-than-expected workload. He said it was too early to assess how the Board is doing in its ­decisions.

“One thing I would say is that the ultimate arbiter of whether the PTAB is getting these things right is going to be the Federal Circuit and, to some extent, the Supreme Court," Kappos said, “We need to reserve judgment and look to the court decisions and also look to the basis of the court decisions. I would see it as OK if the agency gets reversed on close calls, judgment calls on things like 103 decisions. I certainly ­wouldn’t see it as OK if you start getting into ­arbitrary and capricious or abuse of ­discretion kinds of things, though I see no indication that is a problem yet.”

The USPTO asked for feedback on PTAB proceedings and received 37 comments by its deadline last week. Quite a few of the comments raised concerns about the constraints under the proceedings, such as the lack of ability to amend. Many believe the proceedings are weighted too much in petitioners’ favor and are unfair to patent owners.

“What is really at stake here is: how fair are these proceedings going to be perceived as?” Johnson , senior vice-president for intellectual property at Johnson & Johnson, said. “Ultimately if they are perceived as being unfair there will be reactions, whether the reaction is from the Federal Circuit or whether the reaction is from Congress, or whether the reaction is from businesses who say, ‘If every important patent I get can easily be invalidated by taking it into IPR, why should I be doing anything in the patent system? Why shouldn’t I be doing trade secrets or whatever my other alternatives are?

“We all have a strong interest in making sure these proceedings are not only fair but also that they are perceived to be fair. If it may make a difference in perception on the side of fairness, that is something worth going for. These are extremely important issues and I am really glad the PTO has taken the step to go out and get comments. Frankly, if it gets messed up we could lose even more credibility with the patent system itself and that to me is a big long-term risk.”

more from across site and ros bottom lb

More from across our site

Business is quiet so far but the UPC has everything it needs to attract patentees, panellists at Managing IP’s IP & Innovation Summit argued yesterday, June 7
Reviewing the list of automatically qualifying degrees every three years is a great idea and should bring more tech-savvy people to the bar
A Foss Patents blog post revealed that Mr Justice Marcus Smith handed down his judgment in Optis v Apple on May 10
Witnesses during a committee hearing criticised proposals to increase some fees by as much as 400%
Sources say they are likely to hire external counsel that can create a lasting first impression but might turn their backs on lawyers who have nothing new to offer
Varuni Paranavitane, of counsel at Finnegan, examines recent decisions by US and UK courts to demonstrate the proof of infringement that was required
The Federal Circuit will also narrow its investigation into Judge Newman to focus on whether her failure to cooperate constitutes misconduct
The management board will send three names to the Council of the EU for a final decision
Sources say a decision by the IP High Court will make it easier for rights owners to fight infringement
Seán Kelly asked the European Commission how it intends to ensure the EUIPO executive director vote, due tomorrow, will be fair and transparent