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Who is the PTAB, and why are they killing anyone, you might ask. No, they are not yet-another terrorist organization, and no, they are not killing anyone. Rather, they are a government board, and their business is killing patents, not people. More particularly, they are the Patent Trial and Appeal Board (PTAB).[1] This was said of them by Chief Judge Rader of the Court of Appeals for the Federal Circuit (CAFC). He characterized the PTAB as "acting as death squads killing property rights."[2]
The Scene:
The PTAB was created from the recently implemented America Invents Act (AIA) as an alternative to district courts for patent validity / infringement cases. The idea was to provide a faster, cheaper, way to challenge patents. While government fees for the PTAB are around $25k, and legal fees can exceed $250k, district court patent cases cost around $2.5 million.[3] PTAB cases should conclude in 12 to 18 months versus multiple years for district courts.
The Risk:
We all want stronger, better patents, and that was the philosophy behind the PTAB. To provide a path within the U.S. Patent Office to review patents that were mistakenly issued by the USPTO, so they can be fixed early in their life. The problem is that so far, over 80% of challenged claims were killed by cancellation.[4] You might say "See, this proves most patents are bad". However, many causes of death have been administrative, not technical. This means administrative rules of this newly created court result in claims being canceled, even though it is agreed that the claims should be valid over all known references.
The Recourse:
If this sounds like a relevant risk to your business, it may well be. There are steps that can be taken to avoid the death squads. For example, a larger number of interwoven dependent claims covering many variations will cost challengers more in filing fees and legal costs. At some point, as much as an action in a traditional district court case. This additionally offers a more flexible spectrum of claims spanning broader ones to narrower ones. It gives greater options should a challenge arise. Related strategies include reissue applications when available, and expansion of pending related applications.
Take Away Summary:
It may be cliché but here at MCR, we watch so you don't have to. Behind the scenes, we are monitoring changes in intellectual property law such as these and determining how it affects our clients. Upon drafting your patent application, or a response to the Patent Office, we take an understanding of your business needs (and risks) and relate them to the current law. Based on this, we provide the appropriate level of education and counseling so you can make confident, informed, decisions. From these decisions, we act for you to achieve your goals.
Please Spread the Word
This is one example of how, here at MCR, we try to keep the community informed of the changing legal landscape. Please contact me or anyone here for more information. And please pass this along to anyone you know who may be interested in intellectual property legal services. Author David Rardin may be contacted at drardin@mcr-ip.com and (603)886-6100.
Thank you,
David A. Rardin, Esq., Member
Registered Patent Attorney
Footnotes:
[1] The PTAB home page: http://www.uspto.gov/ip/boards/bpai/
[2] The phrase, "Patent Death Squad," comes from a remark at the 2013 annual conference of the American Intellectual Property Law Association (AIPLA) in April. It was by Judge Randall Rader, the chief judge of the Court of Appeals for the Federal Circuit (CAFC). The CAFC handles all patent appeals cases. Judge Rader was discussing post-grant review proceedings. He said, relating the number of patent examiners and PTAB judges: "You have 7,000 people giving birth to [intellectual] property rights," while in the PTAB, there will soon be as many as 300 administrative patent judges "acting as death squads, killing property rights."
[3] See Lessons From The 1st Year Of Post-Grant Proceedings, LAW360, Portfolio Media, Inc., November 06, 2013, Michael J. Kasdan, Joseph M. Casino and Adil Ahsanuddin, Amster Rothstein & Ebenstein LLP, www.arelaw.com/downloads/ARElaw_law360110613.pdf
[4] See "Kill Rate of the Patent Death Squad, and the Elusory Right to Amend in Post-Grant Reviews - Parts I and II published in Intellectual Property Today, April and May, 2014, Rick Neifeld; also from http://www.neifeld.com/advidx.html.
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