PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm
As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).
I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.
The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.
Until recently, infringement was still the primary driver behind most patent prosecution philosophies because patent invalidity can be exceedingly costly and difficult to prove in a district court. For example, an overly broad claim has obvious benefits for proving infringement. This same claim is less of an invalidity concern given: (1 the presumption of validity accorded issued patents; (2 clear and convincing evidence necessary to invalidate; and (3 necessary time and legal fees. As such, securing a claim that was over-reaching relative to the closest prior art was a calculated risk most patentees were happy to take. While it is true that such patents were susceptible to patent reexamination challenge at the USPTO, reexamination was too slow to matter in all but the most lenghty of litigation timelines.
Post-AIA, IPR, PGR and CBM are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, all such challenges must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.”
Almost every patent litigation is now accompanied by an IPR or CBM. The patentability determinations in these cases will occur prior to trial in all but the fastest district court venues. Since these Patent Trial & Appeal Board (PTAB) determinations, assess patentability and not invalidity, patentees cannot seek refuge in a presumption of validity or clear and convincing evidentiary standard. Simply stated, you DO NOT want to defend an over reaching claim at the PTAB. In fact, depending upon how such a claim is defended, an entire portfolio of patents and continuation filings could be surrendered in one fell swoop.
For this reason, patent applications must now be prosecuted with an eye toward patentability, not invalidity.