The Potential Economic Costs to the US Government of Discretionary Denial of Inter Partes Review Based on Criteria such as the NHK‑Fintiv RulesReport Published on August 25, 2023
Recently 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 RulesReport Published on June 01, 2023
In 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 EconomyReport Published on September 23, 2021
Innovation 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.