Morris Manning & Martin, LLP

PTAB’s increased exercise of discretion may squash new patent legislation

06.05.2019

Enacted in 2011, the America Invents Act has ushered in enormous change to the patent landscape. Among these changes was the creation of the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office to simplify the process of eliminating bad patents.

These changes, however, have not been without their detractors.

One complaint is that the PTAB has allowed serial petitions and joinder to keep up multiple attacks on the same patent. New proposed legislation would curtail this and other practices.

Recently, the PTAB has increased the exercise of its discretion and rejected more attempts to institute serial PTAB proceedings and joinders. The PTAB also designated some of these decisions as precedential, thereby guiding future decisions.

These efforts have reined in some of the more egregious offenders.

In exercising its discretion more often, the PTAB may be implicitly working to avoid a formal change to the law.

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