Deputy Directory Lee Announces the Request for Written Comments to Help Improve PTAB Proceedings

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealIn a post from yesterday entitled "Help Improve our AIA Trial Proceedings," Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office, announced on the Director's Forum blog that the USPTO is seeking feedback on Patent Trial and Appeal Board (PTAB) trial proceedings established by the Leahy-Smith America Invents Act (AIA).  This request follows on the heels of the AIA Trial Roundtables that were conducted earlier this year, as reported here.  One of the stated goals of these roundtables was to obtain feedback on how the trial proceedings might be improved.  Now, Ms. Lee explained, the USPTO would like to receive formal comments from the public on a variety of topics related to the PTAB, "including claim construction, amendment practice, and management of concurrent proceedings before the office."  In addition to requesting constructive criticism, the USPTO would like to know what it is doing right.  "We have a world class patent system," Ms. Lee explained, "and this is a golden opportunity to make it even better."  The deadline for submission of comments is September 16, 2014, the two-year anniversary of the PTAB.

Ms. Lee's announcement referenced a Federal Register Notice from June 27, 2014 (79 Fed. Reg. 36474), which is entitled "Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board."  In this notice, the USPTO outlined 17 issues, or questions, for which the Office is most interested in receiving public comments.  Not surprising, the first two questions relate to the standard for claim construction and the ability to amend claims in PTAB trial proceedings.  Specifically, the Notice identified these two issues as:

1.  Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?


2.  What modifications, if any, should be made to the Board's practice regarding motions to amend?

The "broadest reasonable interpretation," or BRI, claim construction standard has been sharply criticized as giving a patent challenger an unfair advantage in front of the PTAB.  Often these challengers are defendants in on-going litigations, and Federal courts use a narrower claim construction standard as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  In fact, the Innovation Act, which last December passed the House of Representatives, contained a provision requiring the USPTO to follow this same civil-litigation standard in its trial proceedings.  The Office has defended the BRI standard as necessary because patent holders have the ability to amend claims during the process.  Or do they?  So far, the PTAB has granted only one motion to amend claims -- a fact that has also drawn criticism from the patent community.  The PTAB has used a strict standard because the claim amendments would occur in the absence of a search of the prior art (at least on the part of the Office).  Therefore, patent holders have been advised to disclose as much about the art as they are aware.  However, either this message has not been well received, or such advice is not practicable in reality.  Therefore, this might be one of the most useful issues on which the Office is soliciting comments.

The remaining identified issues fall within eight categories:  patent owner preliminary response; obviousness; real party in interest; additional discovery; multiple proceedings; extension of 1 year period to issue final determination, oral hearing, and general.  This last category is a catch-all, and includes such topics as whether the Board should change its approach to instituting petitions, page limits, and requests for rehearing.  In addition to the two questions mentioned above, the only additional issue that Ms. Lee highlighted on her blog was related to multiple proceedings:

7.  How should multiple proceedings before the USPTO involving the same patent be coordinated?  Multiple proceedings before the USPTO include, for example:  (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.

Ms. Lee indicated that the Office will review the submitted written comments, in addition to the feedback from the roundtables, and will consider changes (if any) to the PTAB trial proceedings that will "help improve the speed and effectiveness of the proceedings."  We will monitor on the comments received by the Office, and will report on any changes instituted by it in response.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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