首先，局長澄清PTAB屬於USPTO的一部分，因此相較於法院在Phillips v. AWH Corp一案中，所採行之較不廣泛而更可爭論的請求項解讀標準，其在解讀請求項時應當要維持更為廣泛之標準（也就是最寬廣合理解釋（BRI））。根據局長的一些說明，這些變革是試圖要衡平相對於專利權人來說，似乎對於專利挑戰者較為有利的競爭場域。因此，其等主要是針對於PTAB的程序規則上來著手。
Recent changes to US post-grant proceedings introduced under AIA Stefano John / NAIP Education & Training Group , European Patent Attorney
After many of the provisions of the AIA were put into practice just over 2 years ago, the USPTO is now re-assessing the post-grant proceedings put in place by AIA to manage post grant proceedings. The system (either IPR, CBM or PGR) is run by the Patent Trial and Appeals Board (PTAB). Recently confirmed director of the USPTO, Ms. Lee, announced that in light of statistical studies and comments the USPTO has received, they have come to the conclusion that some fixes are required immediately; while others will be introduced later on in the year.
First of all, the director clarified that the PTAB, as part of the USPTO, should maintain the more encompassing (Broadest Reasonable Interpretation (BRI) standard in claim construction, as opposed to the less encompassing and more debatable claim construction standard used by courts as set out in Phillips v. AWH Corp. According to some comments by the Director, the changes will attempt to level the playing field in a contest that seems to favour the patent challenger with respect to the patent owner. They are therefore mainly to do with the PTAB proceeding rules.
The first major change is that the number of pages allowed for a motion to amend is increased to 25 pages from the current 15 pages. This number of pages must include the listing of the claims and 15 pages was considered to be too few to make amending claims during proceeding nigh impossible. Indeed, only 2 sets of motions having been granted in the past 2 years. It is hoped that increasing to 25 pages may make it easier to amend the claims during proceedings if desired (and allowable).
Another major change to be introduced immediately is the maximum limit of pages to be used in the petitioner’s reply to a patent owner response will increase from 15 to 25 pages. Again, this was felt to even the playing field (in this case for the petitioner) and allow the opportunity to reply to every argument raised by the owner.
While the above changes regarding maximum page numbers seem very reasonable in that they allow a more thorough and serious examination of the validity of claims and proposed amendments, one should remember the reason such stringent limits were set up in the first place. They were set up because it was intended that proceedings under the PTAB should be concluded within 12 months from the acceptance of the petition. Experience in EPO inter-partes opposition shows that allowing too much back and fro makes the stringent deadline of 12 months very difficult to maintain.
Other changes proposed by the USPTO to the PTAB will be introduced after a period of public consultation. They regard complimentary rules to allowing more back and fro and allowing for more amendments in the proceedings, which again puts more pressure on the PTAB to reach a final decision in 12 months.
Returning to the comments of the Director regarding the favouring of challenges to the validity of claims, it seems that some studies have shown that 73.5% of the challenged claims did not survive review in IPR proceedings that reached a final decision on the merits. Apparently patent owners removed about 16% of the claims analysed of their own will, which seems to indicate that the proceedings are doing what they were set up to achieve – weeding out granted claims which are invalid.
However the number is very high and it has been pointed out that some of the reason for that may lie with how the petition to start proceedings under the PTAB works. There is a perception that, by granting petition-for-review on a specific case, the PTAB judges have already come to a conclusion in the case before it has even started. This gives the patent owner an unfair battle to win on the merits of the case (since it is the same judges who hear the merits). Thus one of the major changes that the USPTO is proposing is a modified model for a pilot program where a single judge decides the petition and then two additional judges are added for the trial. This should help in redressing any bias formed by the petition granting stage decision, thus redressing any iniquity in the system towards the patent owner while maintaining one of the original objectives of the system – that of weeding out invalid US granted patents.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
