Tuesday, October 21, 2014

AIPLA - Comments on PTAB Rules and Trial Practice Guide

On October 16, 2014 the American Intellectual Property Law Association (AIPLA) filed comments on the PTAB Rules and Trial Practice Guide on rules for post-grant review and inter partes review before the Patent Trial and Appeal Board (PTAB).

The AIPLA presents some pro-patent owner positions in the comment letter. I will list a few with quick comments.

AIPLA argues PTAB values efficiency more than fairness to the participants. My comment is this sounds correct, but in view of the PTAB heavy workload and statutory deadlines, PTAB can't fix this soon. Beside extending the length of these proceedings require Congressional law be modified and ultimately might benefit lawyers more than the parties.

Second, the AIPLA argues it's time to abandon the "broadest reasonable interpretation" for claims, since AIA trials are adjudicative rather than prosecution. I expect powerful forces to push back on this because they would face infringement of narrowly interpreted claims in court that might otherwise be held invalid in the USPTO.

In another place, the AIPLA argues PTAB should not require a motion to amend claims be grounded on a proof of patentability of the amended claim, since it distorts the presumption of validity of US patents and "short-circuits the burden" of the petitioner to prove unpatentability. Since nearly all motions to amend claims are denied, something should be done to make it possible to enter amendments to claims. One approach might be the patent owner could be just required to prove the narrow amended claim satisfies 35 USC 112 rather than prove it satisfies the requirements of 35 USC 102 and 35 USC 103, which were met when the broader claim was allowed.

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