PTO to Create Formal Rules for Starting Patent Validity Trials

The U.S. Patent and Trademark Office (USPTO) issued notice that it will seek public comments regarding its discretion for instituting or denying inter partes review (IPR) proceedings. The formal rules could decide on issues such as serial petitions and petitions targeting the same patents, as well as addressing proceedings with a parallel district court case, which is a hot topic for practitioners. The National Law Journal interviewed Finnegan partner Kevin Rodkey for his thoughts on the USPTO’s notice.

The case that is in the spotlight as it relates to this issue is Apple v. Fintiv, which raises the issue of how the Patent Trial and Appeal Board (PTAB) uses their discretion to institute or deny IPR proceedings with parallel district court litigation. Kevin said, “[Accused infringers] want to have the option of going to the PTO and having validity resolved there [regardless of district court proceedings].” Regarding serial petitions and petitions targeting the same patents, Kevin said, “I wouldn’t be surprised to see patent owners and petitioners put in their own thoughts on that as well.”

Read the full article here.