Patent Invalidation Background

patent-emblem - US InventorThe America Invents Act of 2011 caused great harm to the rights of inventors in the U.S. The worst part was the creation of the Patent Trial and Appeal Board (PTAB).

  • The PTAB is a division of the USPTO that invalidates patents.
  • The PTAB has invalidated 84% of the patents they have reviewed (2,421 out of 2,872).
  • There is no right to a jury trial at the PTAB.
  • Compared to a regular court, the PTAB limits evidence, testimony, due process, and procedural safeguards.
  • Compared to a regular court, the PTAB has a lower burden of proof for invalidation (preponderance rather than clear and convincing).
  • Most PTAB administrative patent judges have no technical experience and minimal legal experience.
  • PTAB administrative judges often overrule examiners and federal judges who previously held a patent to be valid.
  • The PTAB is benefits mostly large corporations – top patent challengers include Apple (650 petitions), Samsung (540 petitions), Google (337 petitions), and Microsoft (224 petitions).
  • It costs an average of $450,000 to defend a patent at the PTAB.
  • PTAB typically adds 2 to 5 years to the duration of a lawsuit.

The bottom line is that the PTAB has been set up to benefit the largest corporations in the world by preventing small companies from enforcing our patents. This has the effect of stifling competition and development of new technologies, causing the U.S. to lose its place as world leader in innovation.

The U.S. Senate is Planning Harmful Legislation to Extend the PTAB

Despite the devastation wrought by the PTAB, the Senate is deliberating on an extension. The PTAB has 3 components:

  • Inter Partes Review (IPR) – allows challenges for the life of the patent, but only on §102 (novelty) and §103 (non-obviousness)
  • Post Grant Review (PGR) – allows challenges in the first 9 months of a patent on any ground – §101 (eligibility), §102 (novelty), §103 (non-obviousness), or §112 (written description & enablement)
  • Covered Business Method (CBM) – allows challenges for the life of the patent on any ground, but only for patents that cover “business methods”

The CBM proceeding is set to expire this month. That would be some progress for our movement to restore justice for inventors. Perplexingly CONGRESS IS PLANNING TO RENEW THE PTAB CBM PROGRAM. This makes no sense at all. The PTAB has virtually ruined our patent system which once was the envy of the world. At US Inventor we have been educating lawmakers to reform, limit, or abolish the PTAB in order to get our nation back on track. The expiration of CBM is a step forward. It must not be extended. Click here to learn more.


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US Inventor, since its founding, has supported the innovation efforts of the “little guy” inventors. We are proponents of “securing for limited times to … inventors the exclusive right to their … discoveries” in order to “promote the progress of Science and Useful arts.” (U.S. Constitution Article I, § 8, Clause 8.) Our broad experience with the patent system, new technologies, and creating companies, gives us a unique perspective.