Finnegan partner Josh Goldberg provided an update to Practical Law: The Journal on recent and upcoming rule changes that companies should be aware of if they're involved in post-issuance challenge proceedings at the Patent Trial and Appeal Board (PTAB). These changes may affect litigation strategies and patent valuation.
Over the past year, the US Patent and Trademark Office (USPTO) conducted notice-and-comment rulemaking regarding:
- Settling inter partes review (IPR) or post-grant review (PGR) proceedings.
- Parallel and serial IPR and PGR petitions.
- USPTO Director Review of PTAB decisions.
- Amending patent claims through IPR or PGR.
Both patent challengers and patent owners may need to adjust their approaches to IPRs and PGRs under:
- The proposed settlement rules, which require filing confidential settlements and all collateral agreements with the PTAB, even if the parties settle before the PTAB institutes a trial.
- The proposed rules on parallel and serial petitions, which set out multi-factor frameworks for consideration and require the petitioner to establish good cause for institution of parallel petitions.
- The final rules on Director Review, which codify the USPTO Director’s ability to address PTAB decisions sua sponte, an ability that has been used to address, among other things, the PTAB’s discretionary denial of a petition in view of parallel district court litigation.
Although patent owners may perceive benefits from the new rule codifying the PTAB’s pilot program motion to amend procedure, they should proceed cautiously because success rates are low, and they may be better served through a continuation application to make claim adjustments.
