PTAB Post-Grant Review, Too Much or Not Enough?

With the America Invents Act still hot off the press with less than 5 years in effect, Congress is already debating two new patent reform proposals. We are still very much in the process of analyzing the full scope of the last reform’s effect on the US patent system. However, whether the AIA went far enough or needs further work, it has made a major impact on IP protection in the US, perhaps most importantly through the Patent Trial and Appeal Board (PTAB).

Patent quality is a core issue for the US patent system, and for IP protection globally. Issues of patent quality have been major contributing factors to the high litigation rates in the US and continue to play a role in calls for further reform. Through better post grant review under the PTAB the USPTO has tried to address the issue of poor quality patents already in the system.  But is it working?

USPTO chief administrative judge, Judge James Smith, recently expressed concerns over the reality of how Inter Partes Review proceedings play out before the PTAB.  There have been far more filings than the USPTO had initially anticipated.  In 2014 there were 1,310 cases as compared to the USPTO prediction of 450. However, according to Judge Smith, the real concern is the invalidation rate for patents brought before the PTAB.

“One criticism of the proceedings, and a potential contraindication of success, is that too many petitioners are winning, patent owners are having claims declared unpatentable too often, and the great number of filings is its own indicator of lack of success, if not in the way the board functions but in the overall development of the law with respect to patents,” Smith said.  

While cleaning up bad patents is crucial for future stability in the patent system, the high invalidation rate coming out of the PTAB has led many to question the system as it stands.  Federal Circuit Chief Judge Randall Rader called the PTAB “death squads killing property rights.” Others have questioned whether, with the PTAB’s lower burden of proof, its post-grant review proceedings might be fundamentally unfair to patent owners.

However, whether or not the PTAB is flawed, so are a number of patents already in the system, so a solution that will allow the narrowing, revision, or invalidation of existing flawed patents is very important for the long term good of the US IP market.