Proposed rule changes by the United States Patent & Trademark Office (USPTO) published on May 27, 2020 may finally help improve patent owners’ odds of avoiding inter partes reviews (IPRs).  When IPRs were first enacted back in 2012, patent owners were allowed to submit a preliminary response to try and convince the Patent Trial and Appeal Board (PTAB) not to institute a trial.  However, a patent owner could not include any testimonial evidence (e.g., an expert declaration) with that preliminary response.

Several years later, recognizing the hardship on the patent owner and the problematic nature of instituting trials on one-sided records, the USPTO changed the rules to allow declaration submissions with the preliminary response.  But the victory for patent owners was hollow – any genuine factual disputes were to be resolved in the petitioner’s favor under the new rule.  In other words, if an issue came down to a battle of declarants, the rules sided with the petitioner, and trial would be instituted.  This imbalance convinced a number of patent owners that preliminary response declarations were pointless, entirely defeating the purpose.

Finally, the USPTO appears to be rectifying this inequality.  The proposed rule changes delete “‘but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute [a] review” from 37 C.F.R. §§ 42.108(c) and 42.208(c).  If finally implemented, this means the PTAB will have to weigh the petition and preliminary response evidence equally in deciding whether to institute a trial.  Whether such a change will actually level the playing field in practice remains to be seen, but at least the USPTO has recognized the near-futility of preliminary response testimony in its current state.  The USPTO is taking comments on the proposed rule change until June 26, 2020.  If finally implemented as proposed, patent owners may get a helping hand this year.

If you have questions about inter partes review or other post-grant proceedings, please contact me or another one of the IP attorneys at Panitch Schwarze at 888.291.5676.