‘No Useful Policy Justification’ for PTAB Presumption Change

On December 9, 2020, the U.S. Patent and Trademark Office published a final rule revising the rules of practice at the Patent Trial and Appeal Board (PTAB). One change includes eliminating the presumption in favor of petitioners when presenting material fact by testimonial evidence. The rule goes into effect on January 8, 2021, and some practitioners believe it will raise the costs of inter partes review (IPR) process and hinder the ability to get post-grant proceedings instituted at the PTAB. However, others believe the change may not be that bad. Managing Intellectual Property interviewed Finnegan partner Josh Goldberg for his insight. 

Josh believes many patent owners will be pleased with the new rule because they might assume they will be able to submit extra declarations to help them knock down petitions. However, he adds, “I’m a little bit hesitant to jump to that conclusion because the USPTO’s indication that they don’t expect this change to start trials within trials, or that they will be granting deposition or extra briefing all the time, may indicate they have a leaning towards the petitioner on disputed issues.”

He also commented on how much weight the PTAB may give a patent owner’s experts, which could potentially create an unfair situation for petitioners. He said, “I don’t know that it’s necessarily fair to conclude that the PTAB is suddenly going to give all this weight to patent-owner evidence. Maybe it will, and maybe it won’t – we will just have to wait and see.”