The 2011 passage of the America Invents Act (AIA) resulted in a seismic shift in patent litigation and disputes in the United States. The AIA brought with it new post-grant proceedings, including inter partes review (IPR) and post-grant review (PGR), that could be used to challenge the validity of patents in a quasi-litigation proceeding before the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trials and Appeals Board (PTAB). Since their inception, over 15,000 such proceedings have been filed, making them an integral part of the process for resolving patent disputes in the United States.

At least in the early years, these proceedings were so fast and efficient in invalidating patents that the PTAB earned the moniker “patent death squad” from critics. See former Federal Circuit Chief Judge Randall Rader, Remarks at the AIPLA Annual Meeting (Oct. 25, 2013). In more recent years, the PTAB has employed its discretion afforded to it by the statute, to deny institution of otherwise substantively strong petitions based on a variety of factors and approaches that have developed over time. But, some have argued this broad discretion has led to increased uncertainty, and has circumvented Congressional intent. As a result, and after receiving comment from practitioners, the USPTO recently released proposed rulemaking that would address concerns raised by critics, and which are targeted at increasing predictability in PTAB proceedings.

Background of Proposals for New Rulemaking