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USPTO Launches PTAB Procedural Reform Initiative

On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings.  The effort includes analyzing five years’ worth of historical data covering PTAB proceedings and user experiences.  The USPTO hopes to use this data analysis to ensure the proceedings are as “effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of patentability of patent claims after they issue.”

Since the introduction of the AIA review proceedings in 2012, the USPTO has found that the proceedings have “significantly changed the patent landscape by providing a faster, cost-efficient quality check on issued patents.”  However, the USPTO is also aware of complaints  about patent owners being subject to multiple and consecutive petitions challenging patent validity, and the use of a broader claim construction standard in PTAB proceedings compared to what is used in district courts that can more easily result in a finding of patent invalidity by the PTAB.

The initiative is set to examine a number of procedures, including procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute.  Furthermore, the USPTO plans to not only evaluate input already received from small and large businesses, startups and individual inventors, IP law associations, trade associations, and patent practitioners, but also to obtain additional feedback regarding improving procedures.  Members of the public are encouraged to submit ideas relating to PTAB procedural reform by emailing [email protected].

The USPTO has not provided any indication as to when this initiative will conclude but has expressed intent to provide updates as the initiative progresses.

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About this Author

Christina Sperry, Medical Technology Attorney, Mintz Levin Law Firm

Christina is an experienced patent attorney whose clients are focused in the medical technology space, from start-ups to large corporations and academic institutions. She advises on patent preparation and prosecution and provides opinions on infringement, validity, and right-to-use for clients in the US and internationally.

The areas of technology in which Christina is particularly focused include mechanical, electrical, and electro-mechanical technical fields such as medical and surgical instruments and devices including endoscopic, soft tissue...

Monique Winters Macek

Monique’s practice is focused on the areas of medical devices, systems, and methods.

Prior to joining Mintz Levin, Monique served as a patent agent for Grant Anderson, LLP; Tandem Diabetes Care, Inc.; and NuVasive, Inc. In these roles she participated in all aspects of patent applications and collaborated on patent strategy development and analysis. She has also worked as a patent agent and bio-mechanical engineer for Flex Partners, Inc. Her engineering work also revolved around medical devices such as cardiac ablation catheters, eye sensor technology, insulin pumps, and orthopedic surgical tools and implants.