IP Alerts

April 27, 2023

On April 20, the USPTO announced an Advance Notice of Proposed Rulemaking (“Notice”), which sets forth a potpourri of proposed policy changes to AIA trial proceedings for public comment. These proposed changes relate to how the Patent Trial and Appeal Board (PTAB) will handle discretionary denial of petitions for inter partes review (IPR) and post grant review (PGR), petition word-count limits, and settlement practices. The proposed changes will be of interest to all current and future parties to patent infringement litigation, parties that may wish to challenge the validity of a patent at the PTAB, and all patent owners generally.

Most of the proposed changes relate to how the PTAB intends to handle discretionary denial of certain categories of petitions for IPR and PGR. These changes include:

• Requiring discretionary denial of petitions filed by certain for-profit, non-competitive entities that the USPTO considers to be abusive;
• Requiring discretionary denial of petitions challenging patents belonging to “under-resourced” patent owners, such as startups, small businesses and independent inventors, who have or are attempting to bring products to market;
• Clarifying and modifying the considerations for discretionary denial of petitions challenging patent claims already found valid by a district court or the PTAB;
• Clarifying and modifying the considerations for discretionary denial of serially-filed and parallel petitions;
• Clarifying the requirements for discretionary denial of petitions raising previously addressed prior art or arguments;
• Broadening the relevant parties in discretionary denial determinations to include those with “a substantial relationship” with the petitioner or patent owner; and
• Clarifying the requirements for discretionary denial of petitions challenging patents also asserted in parallel litigation.

Additional changes being considered also include:

• Providing for separate briefing on discretionary denial;
• Allowing petitioners to pay additional fees to increase the word count limit for a petition;
• As a condition of avoiding discretionary denial, requiring petitioners to file a stipulation that neither they nor their privy or real-party-in-interest have filed a prior post-grant proceeding (PGRs, IPRs, CBMs or ex parte reexaminations) on the challenged claims and agreeing to forgo any subsequent post-grant proceeding if their post-grant proceeding is instituted;
• Requiring petitioners to file a separate paper justifying multiple parallel petitions; and
• Requiring parties to file all settlement papers when the dismissal of an IPR or PGR is sought, regardless of the stage of the proceeding.

In addition to setting forth some potential rules relating to the above changes, the Notice also sets forth a variety of alternate and often competing proposals for improving IPR and PGR practice. Accordingly, all stakeholders would be well advised to review the Notice and consider submitting comments.

The USPTO is accepting public comments through June 20, 2023. In addition, the Director of the USPTO, Kathi Vidal, is holding a public information session regarding the proposed changes on May 9, 2023 at 12 pm ET.  The USPTO has indicated that after it considers public feedback, it will issue more concrete proposed rules in a Notice of Proposed Rulemaking and solicit additional public feedback.

For more information on this topic, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.


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