In the first of a two-part series published by Intellectual Property Magazine, Bass, Berry & Sims attorneys Mike Kiklis, Shu Chen and Matthew Zapadka examined the series of updates from the Patent Trial and Appeal Board (PTAB) over the past year and advised practitioners on how to successfully navigate these changes.
Many of the recent changes have made it easier for patent owners to succeed in PTAB litigation, including:
- The PTAB will now use a narrower claim construction standard, known as the Phillips standard, instead of the broadest reasonable interpretation (BRI) standard.
- The PTAB will provide patent owners with a sur-reply so that they have the final say on patentability, whereas before petitioners usually had the last word.
- The PTAB issued two new standard operation procedures (SOPs), which should lead to more positive and consistent results. One SOP addresses how judges are assigned to panels, while the other created new procedures that facilitate designating decisions as precedential.
- The U.S. Patent and Trademark Office (USPTO) issued proposed rules changing claim amendment practices at the PTAB. The proposed rules provide patent owners with basically an advisory opinion on their proposed amendments during trial that they can address before the PTAB issues its final written decision.
The full article, “PTAB Shake Up” was published in the December 2018/January 2019 issue of Intellectual Property Magazine and is available online to subscribers. The full article content from that issue is available here.