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AIPLA calls for changes in PTAB proceedings

The USPTO has received a total of 37 comments about Patent Trial and Appeal Board (PTAB) proceedings – including from AIPLA – after 22 comments were submitted in the three days before the October 16 deadline for comments

The USPTO outlined 17 questions for consideration including issues such as the claims construction standard, motions to amend, patent owner preliminary responses, obviousness, real party in interest, discovery, multiple proceedings, extension of the one-year period to issue a final determination, and the use of live testimony.

The USPTO is expected to make changes to PTAB proceedings after it has taken on board the feedback. Patent owners have raised concerns about the limited discovery and inability to amend claims under the proceedings in particular.

Wayne Sobon, AIPLA President, signed the Association’s detailed submission that gave responses on all 17 of the questions posed in the request. He began by making a general observation that the PTAB appears overly concerned with achieving a “fast” result for trials but that it should balance that with striving for a “fair” process.

“While AIPLA recognizes the workload burden and statutory deadlines imposed on the Office by the large number of AIA trial proceedings, there is concern that the Office is primarily focused on changes to the trial proceeding rules and trial practice guide that improve the speed and efficiency of how the Office handles these proceedings,” said the AIPLA comments. “AIPLA urges the Office to give further consideration to changes that improve the perception of fairness of these proceedings by all participants. The long-term success of the new AIA trial proceedings will turn not only on how fast the proceedings are disposed of by the Office, but also on how fair the proceedings are perceived by patent owners, petitioners and the public at large.”

One concern raised was whether the PTAB was reserving too much of the statutory 12-months allowed once a trial is instituted to draft and issue the written decision. AIPLA noted that trials now follow a typical seven-month schedule in the Standard Scheduling Order, meaning that five months are being reserved for the PTAB to draft and issue the written decision.

“This seven-month schedule is less than the more generous nine-month schedule that had been employed in numerous AIA trials in the 2012-13 timeframe,” said AIPLA. “Further, it appears that this seven-month schedule is being reduced to a six-month schedule in trial proceedings where there is no motion to amend (eg, trial proceedings involving an expired or soon to expire patent). Given that the Board panels are already well-versed in the issues by the time of the Oral Argument in a given proceeding, AIPLA questions whether reserving nearly half of the 12-month statutory trial period for the Board to render a Final Written Decision is prudent, especially since the Board has the statutory authority to extend the 12-month statutory deadline if the drafting requires additional time.”

It continued: “Instead of compressing the time period for the AIA trials, AIPLA urges the Board to further manage the proceedings by reducing the number of issues in any given AIA trial through the use of earlier interlocutory rulings on motions to amend, claim construction disputes, and motions to exclude.”

AIPLA gave one suggested example. Instead of automatically providing a period for motions to exclude in the Standard Order, the Board could require a party to obtain authorization for a motion to exclude within a predetermined time after an objection is entered, and then rule on such motions prior to the Oral Argument. “A more proactive management of the process tailored to the needs of each individual trial should help the Board better manage timelines and also produce a better perception of the overall fairness of the process,” said AIPLA.

Sharon Israel, AIPLA President-Elect and Partner at Mayer Brown, noted in an interview with AIPLA Daily Report how important PTAB proceedings have become in the two years they have been available.

“It’s really changed the landscape for patent challenges,” she says. “I’m hoping we will be able to be influential in shaping those proceedings. Nowadays it seems with every litigation you have a co-pending trial pending at the PTAB and sometimes you have those whether there is litigation or not. There is probably concern overall that the procedures are not as balanced as they should be, and that they are petitioner friendly.”

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