In the PTO’s recent report on the implementation of the 2011 America Invents Act, the law that created IPR proceedings, the PTO asked Congress to amend the statute to loosen the requirements to file a petition for IPR and to maintain an IPR proceeding.
Among the mechanisms that protect patent owners from misuse of IPR are requirements that limit when a petition for IPR may be filed and who may file it. In its recent report to Congress, the PTO recommended those requirements be loosened.
First, the PTO recommended that the statute be amended to clarify that a petitioner with a pending IPR may file another petition by joining it to the first. The PTAB has been inconsistent about whether such second petitions are permitted, and the amendment would resolve the inconsistency in petitioners’ favor. For example, the decision in Target Corp. v. Destination Maternity Corp. (IPR2014-00508, paper 28) permitted a second petition, while the decision in Skyhawke Technologies, LLC v. L&H Concepts, LLC (IPR2014-01485, paper 13) found such a second petition impermissible.
The PTO’s second recommended amendment would permit petitioners that inadvertently fail to identify all interested parties to add interested parties when the mistake becomes known. The current law can often bar the petitioner from fixing the mistake, resulting in the petition being dismissed and the petitioner being unable to refile. For example, the decision in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. (IPR2013-00453, paper 88) vacated institution and terminated review for this reason.
Although many may find these proposals to be reasonable attempts to remove procedural formalities that prevent final review of patentability, patent owners may be concerned that these changes will assist those seeking to misuse IPR proceedings. Amendments such as these might allow a petitioner to file serial petitions to impose costs on the patent owner or might allow a petitioner to obscure the true identity of all interested parties under the guise of a mistake.
The PTO’s calls for amendment of the statutory rules governing IPR join other legislative proposals that also bear on the relative burdens of IPRs, including the PATENT Act, the STRONG Patents Act, and the Innovation Act. In some respects, these proposals are less petitioner-friendly than the PTO’s recommendation, so whatever reform that emerges from Congress may provide benefits to patent owners and petitioners.