AIPLA Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board December 3, 2020

File Downloads

All documents are in PDF format.

The American Intellectual Property Law Association today filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules.

The AIPLA response is supportive, in principle, of notice and comment rulemaking on the PTAB’s discretion to institute that would start from the tests articulated in the PTAB’s General Plastics and NHK/Fintiv precedential opinions. AIPLA suggests  that, as a general rule, the same patent should not be subject to repeated trial proceedings before the PTAB. The response advocates for rules that would disfavor serial petitions, including a presumption that once a patent has been challenged in an AIA trial proceeding, that patent should not be subject to repeated subsequent challenges. The response also advocates for rules that would adopt current practice regarding parallel petitions—in which the PTAB disfavors multiple challenges except when the petitioner justifies simultaneously filing multiple petitions. Separately, the response supports rulemaking that would define the PTAB’s discretion to institute when parallel proceedings exist in the district courts.

Upcoming Events

  • 2024 AIPLA Virtual Corporate Practice Institute

    January 9 to 16, 2024   |   Up to 360 Minutes of CLE

    Tuesday, January 9, 12:00 Noon - 5:00 PM - and Tuesday, January 16, 12:00 Noon - 5:00 PM -- The Corporate Practice Institute is a virtual event will take place on the 2nd and 3rd Tuesday of January, and will consist of 60 minute Sessions with 30 minute breaks in between. Each evening will end with an online networking event. Program Coming soon! Special registration rates for in-house corporate practitioners.
  • 2024 Patent Prosecution Boot Camp - San Jose, CA

    February 7 to 9, 2024

    Register today and don't miss out! The Patent Prosecution Boot Camp is a comprehensive, CLE-accredited seminar that includes instructional lecture-style sessions with practical tips on U.S. and international patent preparation and prosecution, as well as hands-on interactive workshops that will walk you through drafting claims and responding to office actions.
  • 2024 Trade Secret Summit

    March 14 to 15, 2024

    Save the Date! Please join the AIPLA Trade Secret Committee for the 2024 Trade Secret Summit, which is being held March 14-15, 2024 in Santa Clara, California. The AIPLA Trade Secret Summit is the leading trade secret conference in the nation, with speakers from across the spectrum of private practitioners, in-house counsel, government, and academia, as well as fantastic networking opportunities. Registration and Venue Information Coming Soon!