Partner Ted Cannon, chair of Knobbe Martens’ Patent Trial and Appeal Board (PTAB) Trials practice group, authored the article “New Proposals May Normalize 2 PTAB Petitions Per Patent,” published by Law360.
In the article, Mr. Cannon examines changes the USPTO is considering to how the PTAB will handle “parallel” petitions—multiple petitions filed by a petitioner around the same time against the same patent, and the possible impacts these will have on petitioners. One of the proposed changes being considered would allow petitioners to pay additional fees to double the current word count limit for a single petition. Another change being considered would require petitioners who file parallel petitions to show good cause why parallel petitions are necessary.
Mr. Cannon discusses the impact of adopting both proposals writing, “Implementing both proposals for a higher word-count limit and show of good cause would encourage petitioners to pay to file a single expanded petition equivalent to two petitions to avoid needing to show good cause.” He also notes that implementing both proposals together would “tend to normalize the effective filing of two petitions — in the form of an expanded petition — while eliminating most filings of three or more petitions.” According to Mr. Cannon, this would in return, likely increase the effective number of petitions instituted per patent, based on “fiscal year 2020 USPTO statistics related to parallel petition filings.”
Read the full article here.
