Tom King in Managing IP: Proposed PTAB Changes Aim to Increase Balance


PTAB observers have reacted to USPTO’s extensive set of proposed rule changes, noting patent owners will benefit from proposals such as allowing testimonial evidence in their preliminary response. The USPTO has followed up the rule changes by also suggesting a pilot programme of having a single judge determine whether to institute an IPR...

Tom King, counsel in the Orange County office of Haynes and Boone, noted that the USPTO has decided to keep the rules for IPRs essentially unchanged. 

"Going forward, changes in the IPR process are much more likely to occur on a case-by-case basis by adjudication (for example, its decision in Idle Free for amending claimed was recently updated by the PTAB in MasterImage 3D," King told Manging IP. "We are now looking at essentially an incremental 'IPR common law’ model for changes to the practice."

King added: "The real value for practitioners in the new rule is the PTO’s response to the public comments. There, the PTO sets forth its positions on various issues and criticisms. Savvy practitioners will mine those responses for indications on how the Board is likely to deal with difficult or contested issues."

Excerpted from Managing IP. To read the full article, click here (subscription required).

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