Patent Attorneys Pivot Focus After Tumultuous Tribunal Changes

Recently, the U.S. Patent and Trademark Office made a series of changes to the inter partes review process. Notably, challenges are now filtered through an approve-or deny decision by the USPTO’s direction before any review on the merits.

These changes have some patent practitioners turning to an older type of proceeding that predates the PTAB: ex parte reexamination. Any person or company can ask the PTO to reexamine a patent based on an earlier invention or combination of inventions that render the patent obvious.

Finnegan partner Joshua Goldberg told Bloomberg Law that, “IPR work hasn’t completely ‘fallen off a cliff.’” He said the total volume of work for his practice group has gone up, “contrary to what you might expect,” he said, pointing to the combination of previously instituted IPR cases and the surge in reexam work.

Although new IPR petitions are down, it hasn’t become obsolete.

“That continued interest may reflect a bet that federal courts could still undo some of the PTO’s more aggressive efforts to scale back IPRs,” Josh said.

He noted that patent suit defendants have filed 12 challenges to the PTO’s IPR-institution changes in the form of requests for writs of mandamus at the Federal Circuit this year.

“There’s still companies on the defense side who look at what’s been happening, and take the view that it’s wrong and at some point a court may step in and adjust what’s happening,” Josh said.

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