The Potential Economic Costs to the US Government of Discretionary Denial of Inter Partes Review Based on Criteria such as the NHK‑Fintiv Rules
Report Published on August 25, 2023Recently proposed rulemaking and legislation would increase discretionary denial of institution of inter partes review (IPR) matters based on the criteria set forth in the Apple, Inc. v Fintiv, Inc. (Fintiv) matter and similar provisions. The Fintiv guidelines and related restrictions can make it difficult for claims to be fully considered even in cases where there is a substantial probability of success for the petitioner. If the proposed guidelines were implemented, the result would be a reduction in IPR proceedings even for cases that are otherwise meritorious. As a consequence, the economic efficiency benefits associated with the IPR process would be substantially diminished.
The Potential Economic Benefits of Recent Reductions in Discretionary Denial of Inter Partes Review Based on Criteria such as the NHK‑Fintiv Rules
Report Published on June 01, 2023In recent years, there has been an increase in discretionary denial of institution of inter partes review (IPR) based on the criteria set forth in the Apple, Inc. v Fintiv, Inc. (Fintiv) matter. These guidelines made it difficult for claims to be fully considered even in cases where there was a substantial probability of success for the petitioner, resulting in a reduction in IPR proceedings and related economic efficiency benefits. Subsequent guidance from the US Patent and Trademark Office (USPTO) clarified the appropriate application of Fintiv rules, resulting in a reduction of discretionary denials and positive implications for efficiency and the economy.
An Assessment of the Potential Impact of Expanding Inter Partes Review (IPR) Under the America Invents Act on the US Economy
Report Published on September 23, 2021Innovation has long been recognized as the key factor supporting US economic growth and competitiveness. A critical element of the infrastructure facilitating product development and commercialization is the system that protects intellectual property and encourages its widespread adoption and implementation. The current framework that facilitates this process includes the LeahySmith America Invents Act (AIA) and the Patent Trial and Appeal Board (PTAB). The AIA and PTAB reduce the need for and cost of patent litigation, reducing transaction costs and generating substantial economic benefits. Potential expansion of the AIA to further enhance its applicability could lead to notable additional gains.
An Assessment of the Impact of Covered Business Methods Proceedings before the Patent Trial and Appeal Board on the US Economy
Report Published on September 16, 2020The Leahy-Smith America Invents Act (AIA) and the Patent Trial and Appeal Board (PTAB) are crucial aspects of the US system of intellectual property protection. The AIA and PTAB reduce the need for patent litigation, reducing costs and generating substantial economic benefits. One type of patent which has been protected involves covered business methods (CBM). CBM patents deal with methods or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. (Technological inventions are excluded from CBM.)
An Assessment of the Impact of the American Invents Act and Patent Trial and Appeal Board on the US Economy
Report Published on June 25, 2020Innovation has long been recognized as the key factor supporting US economic growth and competitiveness. A critical element of the infrastructure facilitating product development and commercialization is the system that protects intellectual property and encourages its widespread adoption and implementation. The current framework that facilitates this process includes the Leahy-Smith America Invents Act (AIA) and the Patent Trial and Appeal Board (PTAB). The AIA and PTAB reduce the need for and cost of patent litigation, reducing transaction costs and generating many substantial economic benefits.