Navigating the Current PTAB Landscape: Key Changes and Strategies for IP Owners

Post-grant proceedings are administrative trials conducted after a patent has been granted, allowing third parties to challenge the validity of the patent. These proceedings are conducted by the Patent Trial and Appeal Board (PTAB), an adjudicatory body within the United States Patent and Trademark Office (USPTO). The PTAB oversees various types of trials, including inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method (CBM) reviews.

In 2024, the PTAB implemented several key changes to improve the efficiency and fairness of post-grant proceedings. These changes are designed to boost confidence in the protection and enforcement of IP rights, ensuring innovations are better safeguarded.

What is the Purpose of a Post-Grant Proceeding?

Post-grant proceedings provide a mechanism for third parties to challenge the validity of a patent on any ground that could be raised under the patent statute. These proceedings are generally faster and less expensive than litigation in federal court. The most common types of post-grant proceedings are:

• Inter Partes Review (IPR)—Challenges the validity of a patent based on prior art consisting of patents and printed publications.
• Post-Grant Review (PGR)—Allows for a broader range of challenges, including issues of novelty, non-obviousness, written description, enablement, and indefiniteness.
• Covered Business Method (CBM) Review—Focuses on patents related to financial products or services.

Key Changes

1. Streamlined Procedures—The PTAB streamlined its procedures to reduce the time and cost associated with post-grant proceedings. This included simplifying the petition filing process and expediting the review timeline.
2. Enhanced Transparency—The PTAB enhanced transparency by providing more detailed explanations for its decisions and making its processes more accessible to the public.
3. Increased Flexibility—The PTAB introduced more flexible rules to accommodate the diverse needs of patent owners and challengers. This included allowing for more opportunities to amend claims during proceedings.
4. Improved Case Management—The PTAB implemented better case management practices to ensure that proceedings were handled efficiently and fairly. This included assigning dedicated panels of judges to specific cases and providing more guidance to parties involved in the proceedings.

Strategies for IP Owners and Representatives

To navigate the recent PTAB changes effectively, Ludwig APC suggests that IP owners and their representatives adopt these key practices:

• Stay Updated—Continuously review PTAB announcements and updates to stay informed about the latest changes and developments.
• Strategic Planning—Develop comprehensive strategies that leverage the new streamlined procedures and flexibility. This includes meticulous preparation of petitions and responses to enhance chances of success.
• Engage in Advocacy—Participate in discussions and advocacy efforts to shape future policy changes and ensure IP owner and client interests are represented.
• Invest in Education—Invest in ongoing education and training both for legal teams and clients, and/or work with expert third parties to ensure everyone is up to date on the latest rules and best practices.
• Strengthen Collaboration—Enhance collaboration with legal teams, clients, and experts to gather all necessary information and present it effectively. This includes thorough prior art searches and robust arguments for claim amendments.
• Utilize Technology—Leverage technology and software to conduct research, manage cases more efficiently, and stay organized throughout any proceedings.

Let’s Work Together: Global Experience, Personal Focus

By staying proactive and informed, IP owners and their representatives can navigate the new PTAB proceedings and processes effectively to ensure their innovations are well protected. Contact Ludwig APC today to arrange a free consultation at (619) 929-0873 or [email protected].