Earlier this month, the Senate Judiciary Subcommittee on Intellectual Property held a hearing to discuss Reforming the Patent Trial and Appeal Board – The PREVAIL Act and Proposals to Promote U.S. Innovation Leadership. Back in June, after the PREVAIL Act was introduced, I noted that “in practice, the PREVAIL Act would severely limit access to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. (Patent Trial and Appeal Board) review and make it more difficult to challenge invalid patents on their merits” and that “the legislation appears to primarily be a response to oft-repeated assertions by certain interest groups that patent owners – particularly small patent owners – face repeated harassment through coordinated validity challenges and that current review practices create opportunities for abuse by petitioners.”
Unsurprisingly, but troublingly, during the hearing lawmakers and witnesses touted several longstanding misconceptions about how the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. operates, including the patent owner harassment. Another claim that featured heavily during the hearing is that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. “kills” patents at extremely high rates. The oft-repeated phrase “patent death squad” wasn’t mentioned, but the sentiment was there.
This summer, Senator Coons’ office released a factsheet about the PREVAIL Act citing that, “about 80 percent of instituted PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings that reach a final written decision result in the invalidation of at least one challenged patent claimThe section of a patent that describes the legal scope of the invention. Patent claims are supposed to establish the boundaries of the patentee’s entitlement to exclude. Under peripheral claiming as practiced in the U.S., claims establish the outer bounds of the patentee's privilege to exclude others. For further reading, see Burk and Lemley, Signposts or Fence Posts., with 65 percent of those proceedings resulting in the invalidation of all challenged patent claims.” This data point helps fuel the “death squad” story, but it’s a misleading number. In order for a review to be instituted a PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. petition already must show a “reasonable likelihood” or, depending on the circumstances, “compelling merits” that a patent is invalid—a threshold inquiry where nearly half of petitions fail. Therefore, petitions that make it to a PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. trial stage have already been deemed, by experts, to likely be invalid. Only looking at the final written decision data heavily skews the figures in one direction.
I was pleased to hear one witness Michelle Armound, Founding Partner of Armond Wilson, correct the record during her oral testimony. Michelle cited the Patent Office’s 2023 End of Year Outcome Round Up for IPRs and PGRs, and explained, “There is a perception that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. is just there killing patents and if you actually look at the numbers it’s actually a pretty balanced resolution…there is a 59% win rate for patent owners and I think that is really good news.” A pretty good win rate for a process that supposedly overwhelmingly kills patents.
Armound’s 59% is not the only way to slice the data that shows the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. “death squad” assertion is not based in reality. According to USPTOUnited States Patent and Trademark Office. See also PTO. data, between September 16, 2012 and September 30, 2022, 8,578 patents were challenged in America Invents Act proceedings. Out of those challenges, 2,749 were partially invalidated and only 870 were fully invalidated by the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. Do the math and only 10% of petitions have been completely invalidated. Further, only 26% of challenged claims and 53% of instituted claims were found unpatentable in FY2022 and only 33% of challenged patents had one or more claims deemed unpatentable. All of this is a far cry from the “death panel” rhetoric that’s been perpetuated by some interest groups.
As lawmakers continue to debate the PREVAIL Act, it is my hope that we can all start from a place of agreeing on some foundational data about how the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. has been operating over the last decade-plus. Until then, advocates on both sides of the issue will be speaking past and not with each other. In order to have a productive conversation, key PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. misconceptions need to be put to bed.
