Simple Agency Fix Would Cure Optics Problem
In another week, the USPTO will close comments on its recently issued Request for Comments (RFC). As previously discussed, the RFC seeks public input on its discretionary practices under 314(a), including serial and parallel petition practices, and what if anything the PTAB should do to refine its approaches.
When it comes to parallel petitions, the PTAB could easily eliminate upward of 80-90% of these filings with a simple tweak to its procedures.
First let’s be clear, so-called “parallel petitions” come in three different flavors. There are what I refer to as “pile on petitions,” which repetitively attack the very same claims across multiple petitions. Next there are petitions, that due to the number of claims/petition word count, have to be split into multiple petition filings. And finally, there are what I would consider true parallel petitions — those that present alternative arguments against a same set of claims (such as in a priority dispute).
The first category is the true abuse, and why we have rules directed toward “parallel petitions” in the first place. Filing 8-9 petitions to attack a single group of claims is completely unnecessary. The Board has implemented a ranking system to review such multiple filings, and they rarely look beyond the petition ranked #1. This solution seems to be working just fine. However, carrying that ranking system solution over to the other two categories makes less sense.
As to what I call true parallel petitions, alternative arguments should be permitted when necessary. Ranking one petition over the other has no real utility in this context. Currently, the PTAB Trial Practice Guide takes the positions that such alternative filings, such as when challenging the priority of a patent, should be “rare.” In my experience, while not common, “rare” is a bit of an overstatement. My view is that if anything, the Board should approach such filings more liberally then they do currently, and drop the ranking requirement.
The last category is what makes up the vast majority of “parallel petition filings, petitions that are presented against different claims of a patent due to petition size limitations. These are not parallel petitions in the same respect as someone attacking the same claims 8-9 times. And since these petitions represent the vast majority of filings, removing them from the “parallel petition” pile would certainly improve public optics, and stop critics from insisting that somehow the PTAB still permits parallel filings. As to the ranking requirement, it makes no sense here as, of course, a petitioner wants the Board to institute on all claims of a patent.
The simple way to eliminate the word-count category of filings is to allow a petitioner to consolidate such filings into a single petition by multiplying the filing fee. So, rather than filing 3 petitions on a given patent (e.g., petition 1 – claims 1-20; petition-2 claims 21-40; and petition 3- claims 41-60), just charge three times the fee and accept one, consolidated petition. Perhaps the Board’s concern is that filers would abuse this process by paying extra to repetitively attack the same claims in one mammoth filing, but such a potential abuse is no harder to police in a consolidated filing than separate filings. (Simply reject any such filing that presents more than X grounds directed to a single claim). More importantly, by allowing for a consolidated petition filing, the numbers of so-called “parallel petitions” would decrease dramatically.