PTAB Wants New Rules to Tackle IPR Imbalance

On May 26, 2020, the Patent Trial and Appeal Board (PTAB) released proposed changes to the American Invents Act (AIA) trial rules. To address concerns that the current process was discouraging patent owners from filing any testimonial evidence in response to inter partes review (IPR) petitions, the proposed changes would eliminate a presumption in favor of the petitioner on disputes over expert testimony in IPRs. World IP Review contact Finnegan attorney David Reese for his thoughts on the proposed changes.

David said, “Even with adoption of this rule, patent owners may still be hesitant to file testimonial evidence with their preliminary responses because of the lack of pre-institution discovery and for fear that institution under the new rule would make it even more difficult for the patent owner to overcome the institution decision during trial and achieve a favorable final written decision.”

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