This article originally appeared in IP Pro
A recent change to the standard for challenging and overturning patents at the PTAB is inconsistent with other patent office proceedings and should be reversed, says the High Tech Investors Alliance’s general counsel, John Thorne
On 11 October, the US Patent and Trademark Office (USPTO)announced that it is changing the standard for challenging and overturning patents before the Patent Trial and Appeals Board (PTAB) in inter partes review, post-grant review, and coveredbusiness method review proceedings. The USPTO is replacingthe broadest reasonable interpretation (BRI) standard with the claim standard used in federal district court. The change is a mistake and should be reversed.
To begin, the notion that there needs to be consistency between the standards used in federal court and before thePTAB is flawed. The purpose of PTAB trials is fundamentally different from the purpose of federal court litigation. Courtproceedings exist to resolve disputes between private parties. A court decides whether the defendant infringed the patentand whether the patent is valid in the first place. Validityrequires proof by clear, convincing evidence, and when there is a validity challenge to the patent, the patentee has no opportunity in court to amend its claims to avoid invalidity.
In contrast, the role of the PTAB is to ensure that only clear and valid claims emerge from the patent office. The constitutional mandate of the USPTO is to promote theprogress of science and the useful arts. One consequence of that mandate is that, unlike in federal court, the PTAB evaluates patentability under a lower ‘preponderance of the evidence’ standard than is used in district court. Another natural corollary to the constitutional mandate—until recently— was the BRI standard...
Read the full article on IPPro here on page 22: http://www.ipprotheinternet.com/ipprotheinternet/IPPro_issue_009.pdf