Breakout Session
Dissecting PTAB Rulemaking & Legislation: Will it Make Things Any Better? *
September 18, 2023 @ 9:00 AM EST – Knowles IP Strategies Ballroom
9:00 AM ET
September 18, 2023
Dissecting PTAB Rulemaking & Legislation: Will it Make Things Any Better? *
The United States Patent and Trademark Office (USPTO) has published an Advance Notice of Proposed Rulemaking (ANPRM) in the Federal Register, seeking public comment regarding a variety of issues relating to proceedings before the Patent Trial and Appeal Board (PTAB). The deadline to comment was June 20, 2023, and proposed rules are expected late summer or early fall.
The ANPRM, which is an unusual additional step in rulemaking, has some ideas that are likely not to be very controversial, but other ideas on which there will likely be great difference of opinion. Ranging from ideas like streamlining Fintiv factors, to excluding PGR filings from discretionary denial based on ongoing parallel litigation, to requiring the disclosure of join defense agreements, to expanding the “compelling merits” standard to 314(a), to possibly putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent where there is no clear relation to the patent, there is something for everyone to love and something for everyone to hate.
Meanwhile, Senators Chris Coons (D-DE) and Thom Tillis (R-NC), Dick Durbin (D-IL) and Mazie Hirono (D-HI), introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, aim is to reform the Patent Trial and Appeal Board (PTAB) and would build upon Coons’ STRONGER Patents Act, introduced in 2019.
Will the USPTO be able to make the PTAB more fair and equitable through rulemaking? What are the chances that the PREVAIL Act will pass? Our panel will explore USPTO proposals, including the pros and cons of the most controversial ideas, and dive into the substance of the PREVAIL Act.
Materials
PTAB Rule Ideas – The Good, The Bad, & The Ugly
The PREVAIL Act— Harm U.S. Industry to Fight China?
New PTAB Bill to Drive 101 Compromise?
Salesforce Reexams Vacated Because It Was Real-Party-in-Interest in RPX IPR
The United States Patent and Trademark Office (USPTO) has published an Advance Notice of Proposed Rulemaking (ANPRM) in the Federal Register, seeking public comment regarding a variety of issues relating to proceedings before the Patent Trial and Appeal Board (PTAB). The deadline to comment was June 20, 2023, and proposed rules are expected late summer or early fall. The ANPRM,…
Session Speakers
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