Metro Detroit patent attorney Monte Falcoff was recently interviewed by Bloomberg Law about the IPR amendment pilot program that will likely make it easier for patent owners to fight off challenges in Patent Trial and Appeal Board (PTAB) proceedings.
Launched on March 15, the pilot program specifically allows patent owners the opportunity to request guidance from the PTAB regarding proposed claim amendments. Importantly, it also gives them a second opportunity to amend those claims.
According to the article, titled “Pendulum Swings Toward Patent Owners in Agency Challenges,” the PTAB denied 90% of motions to amend patent claims that were submitted between 2013 and 2018. The new program seeks to even out the odds in what Falcoff calls “a strong push in the effort to make things a little more patent-owner friendly.”
That “push” could also result in a more patent owners attempting to amend their claims right before their proceeding moves into oral hearings.
“The pendulum was at an initial extreme position, but we’ve gotten so much outrage from patent owners about killing such a high percentage of patents, that the pendulum is being pushed again toward at least a neutral position by the director of the Patent Office, and properly so,” Falcoff said. “It does create a burden for the petitioner. Is it significant or undue? No, I don’t think it is.”
It may be too early to tell if patent owners will flood the system with patent amendment motions, or if the pilot program will have lasting effects, but for now it is providing some opportunities for success — especially when there is a long life left on the patent where it may still impede competitive future products.