Preliminary Responses Accompanied by Declaration Evidence: Updated Results
Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses. The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence. I had my doubts.
In the below chart the start date of August 15th was chosen to capture those Institution Decisions having preliminary responses due on or after May 15th. In this 8 month window of Board decisions, only 30% of filers availed themselves of the new option (this is a slight drop from the initial percentage of 38% I found last fall.) Of those 144 patentees availing themselves of the new rule, 69 of the Institution Decisions failed to mention the new evidence.
While the data is still early, clear trends are emerging as to efficacy. That said, it appears these spotty results still militate in favor of continued caution for patentees.
As to the those cases in which the new evidence was cited, it is interesting to note that there appears to be some difference in efficacy based on technology. Petitions in the unpredictable arts (Bio/Pharma) seem more likely to result in stalemate (contested fact). This may be due to the narrow focus of these disputes/claims and the high level of skill typical of declarants in this space.