PTAB Reform Act of 2022
Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.
Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.
Let’s go through each provision of the revised bill (here):
- PTAB judges to abide by Code of Conduct for U.S. Judges — (Noncontroversial)
- Changes to the judges assigned will be noted in the record — (This is existing PTAB practice, but not statutorily required)
- (New) Director Review to be made available for institution — (PTAB claims to be doing, but really isn’t)
- Timelines and regulations for Director Review to be completed 18 months from passage (Already underway given the Director’s recent statements)
- Overruling Click-to-Call (i.e., dismissal of litigation without prejudice restarts one-year window). (Given the low frequency, relatively noncontroversial)
- If new claims are added to a patent by reexamination or reissue, even if petitioner is outside of its window, those claims get a fresh window. (Given the low frequency, relatively noncontroversial)
- Multiple proceedings are to be consolidated, merged or stayed. Reexam cannot be favored over an AIA trial. — (Given the low frequency, relatively noncontroversial)
- (New) No repeated petition filings for a losing petitioner, including RPI and privies. — (This is existing PTAB practice, but not statutorily required)
- 314(a) rewritten to exclude consideration of district court and ITC trial schedules –(This is Leahy’s must-have)
- (New) 314(a) expanded to cover Open Sky type abusive filings, and sanctions added. –(A must-have for Tillis)
- Philips claim construction required — (PTAB existing practice, but not statutory)
- PTAB judges may not communicate with superiors on case specifics except as allowed by the Code of Conduct for Unites States Judges.– (already in place, but not statutorily required)
- Aqua Products overruled, burden on patentee to prove patentability of amended claims. full examination, including 101 and 112. — (Burden change is not meaningful in my experience)
- Issue a certificate cancelling claims within 60 days of final appeal decision or abandonment. — (some delays have been years, long overdue)
- Re-hearings must conclude within 120 days after FWD. — (again, delays can be significant)
- Standing conferred for appeals if estoppel reasonably expected to be asserted — (basically competitor standing).
- (New) Fees of small and micro-entities may be covered by the agency if the patent is not being litigated or licensed. — (Exceedingly rare scenario)
Noticeably absent from the revised list is the addition of obvious-type double patenting to IPR jurisdiction, or the proposal to encourage stays in favor of a pending PTAB review. These are the provisions the bio/pharma lobby was expected to target. Not surprisingly, they were horse traded in favor of the 314(a) changes Leahy is driving.
Added provisions are directed to recent PTAB developments (Open Sky & the pending mandamus on Director Review for institution decisions).
The bill will likely see floor debate in early fall as it presents the potential for a rare bipartisan “win” that will be spun as helping to control drug costs and abuses of the patent system. With mid-terms approaching, and Leahy retiring, time is of the essence for this bill.
An interesting document that also issued with the bill is a “Fact v. Myth” document (here), which is sure to be send many PTAB critics screaming into the night (pretty much what they do every night anyway)