NEW US PATENT CHALLENGE PROCEDURES PROMOTE GLOBAL HARMONISATION, BUT CASUALTIES RUN HIGH
The introduction of post-issuance patent challenge proceedings before the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) has had an extraordinary impact on US patent litigation practice. So-called IPR (inter partes review), CBM (covered business method review) and PGR (post-grant review) proceedings turned the PTAB into one of the busiest patent litigation venues in the country (and the world) virtually overnight.
Coupled with the Supreme Court’s decision in Alice Corp. vs. CLS Bank, which makes it easier to invalidate US patents on the basis of unpatentable subject matter, PTAB proceedings have led to patent invalidations at a rate that gives pause to even the most outspoken critics of patent quality and ‘patent trolls’. What has been largely overshadowed in the public debate during the first two years in which these proceedings have been available is one of the main reasons for their adoption in the first instance: global harmonisation.
Like the change to a ‘first-to-file’ priority system, the institution of robust post-issuance challenge proceedings was meant to bring the US patent system more in line with other major patent jurisdictions around the world. A look at how PTAB proceedings compare to challenge proceedings in other major jurisdictions shows substantial progress in this regard, but also that revealing differences remain.
Apr-Jun 2016 issue
Skadden, Arps, Slate, Meagher & Flom LLP