Matt Braunel, an Intellectual Property partner in Thompson Coburn’s St. Louis office, talked to Law360 about the implications of the U.S. Patent and Trademark Office (USPTO) introducing a new rule. The article, “New PTAB Rule Could Lead To Rush Of Bids For Vidal's Eye,” was published on July 28, 2023.
USPTO Director Kathi Vidal introduced the new rule allowing litigants to request the director's review of Patent Trial and Appeal Board (PTAB) decisions on patent challenges. Previously, only the director could initiate a review, but now parties can ask for it too.
As PTAB institution decisions cannot be appealed to the Federal Circuit, this new option is expected to lead to a surge of requests for reviews. The change is seen as favorable for challengers, as PTAB typically invalidates a significant portion of challenged patents. However, the director's review is expected to be limited to cases involving "an abuse of discretion" or "important issues of law or policy." Attorneys anticipate many litigants will seek review, despite long odds for approval.
Given those odds, being able to ask the director to rethink the board's decision not to review a patent "is a very significant change and will very much benefit challengers," said Matt.
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