August 29, 2015

“Do The Proposed AIA Rule Changes Go Far Enough?,” Law360, August 29, 2015

The U.S. Patent and Trademark Office recently announced a set of proposed new rules for America Invents Act reviews that would allow patent owners to introduce expert testimony in their responses, while leaving many other aspects of the proceedings unchanged. Do these proposals go far enough to address the concerns of patent owners and attorneys, or do they go too far?

David L. Suter, Patent Attorney and Principal, Harness Dickey

Former Associate General Counsel for Patents, Procter & Gamble Co.

In my view, the question of whether the new IPR rules go too far, or not far enough, in addressing patent owner concerns emphasizes the wrong issues regarding the strikingly high frequency with which claims are found invalid. Conceptually, any changes to the rules that allow more evidence to be considered by the PTAB should be a good thing, as long as IPR remains a compact and cost-effective alternative to litigation. However, the question presupposes that IPR procedure should be tuned simply because some stake holders do not like the results. Perhaps the better question relates to the substance, not the procedure, of why so many patent claims are being found invalid. Rather than the PTAB’s rules, the answer is likely found upstream in the patent filing and examination process, and the significant changes in the legal standards (e.g., led by the Supreme Court) that are certainly less patent-friendly than when many of the challenged patents were filed. There are broader issues at play in the IPR statistics. Refinements in the process are quite appropriate as we work through this relatively new procedure. But, if we are concerned about the results, perhaps we should be more concerned about the systemic factors that are leading to those results.

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