“The America Invents Act left it to the USPTO to establish the rules and procedure of the PTAB. The rules of practice under David Kappos and Michelle Lee were radically skewed to help infringers and hurt inventors. Director Iancu has begun to fix the most egregious of these biased rules. However, we are very far from leveling the playing field.”
Recently, the USPTO published a Notice of Proposed Rulemaking (NPRM) to change the “Trial Practice at the Patent Trial and Appeal Board,” which is contained in Part 42 of Title 37 of the Code of Federal Regulations. This is the fifth rule change since the Patent Trial and Appeal Board (PTAB) was created and the second of Director Iancu’s tenure.
Through the Years
The first rules were issued on September 16, 2012, the one year anniversary of the America Invents Act. David Kappos was Director at the time. The first rules were controversial and heavily biased against inventors. For instance:
- claims were construed under the broadest reasonable interpretation;
- patent owners were denied the right to present testimony in a preliminary response;
- user fees subsidized discounts and rebates to petitioners;
- unlimited petitions were permitted;
- previously considered prior art and arguments were permitted;
- interfering and overruling with district courts was permitted;
- discovery was effectively prohibited;
- the institution decision was delegated to the PTAB.
It is stunning how lopsided the rules were written. It was arguably deliberately implemented by the USPTO to be a death squad. David Kappos resigned a few weeks following the rule implementation and President Barack Obama’s reelection. The office was officially vacant from Feb 1, 2013 until Michelle Lee was confirmed on March 9, 2015.
(This “PTAB Rulemaking: Past, Present, and Future” article first appeared on IPWatchDog)