At the direction of the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, Michelle K. Lee, the USPTO is launching an initiative to use nearly five years of historical data and user experiences to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review proceedings. The purpose of the initiative is to ensure that the proceedings are as effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of the patentability of patent claims after they issue.
Since being created through the passage of the America Invents Act (AIA), PTAB proceedings have significantly changed the patent landscape by providing a faster, cost-efficient quality check on issued patents. Since AIA trials debuted in 2012, the USPTO has continuously looked for ways to improve the proceedings. Over time, we have listened to our stakeholders’ experiences, and we have now compiled data derived from thousands of case filings and dispositions.
This initiative will examine procedures including, but not limited to, procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. It will also examine when it would be appropriate to extend the length of the proceedings beyond 12 months and when it would be appropriate to review a decision to institute. It will evaluate the input already received from small and large businesses, startups and individual inventors, IP law associations, trade associations, and patent practitioners, and will seek to obtain more feedback regarding potential procedural enhancements.
Coke Morgan Stewart, Senior Advisor to the Director, will be coordinating this effort.
Members of the public may submit their ideas regarding PTAB procedural reform to: PTABProceduralReformInitiative@uspto.gov.
As this initiative progresses, the USPTO will share news through this website.