Patent Attorney and Founder
Hi everyone, I’m J.D. Houvener, your host of the Bold Today Show, where you, the inventor, entrepreneur, or business owner, get your daily dose of inspiration to make the world a better place. Thanks for joining me today. We’re on part two of a five-part USPTO and policy section. We’re talking about the United States Patent and Trademark Office and what’s on the agenda, what are they up to this coming year and in years coming. We talked about Andre Yongku, the new director yesterday. We’re gonna hear about more of that today.
As I share about the Patent Trial and Appeal Board (PTAB), as you all might have known, I’ve shared this in previous sessions. The American Invents Act, which was passed in 2013, brought into being this Patent Trial and Appeal Board, acronymed as PTAB. It’s a specialized adjudicative panel of judges that all they do all day long is look at patent cases. It’s a wonderful avenue for those that are arguing about patents and validity and claim changes to have a much more efficient path to their day in court, as opposed to going to federal court, which is much more arduous in terms of costs, fees, and paying the attorneys. The PTAB is a much more time-efficient manner to get a more predictable solution.
All that said, it hasn’t been all that hot, right? It’s been what, five years now since the PTAB has been running. There are three or four major proceedings that they hear, the biggest and by far and away the most popular is Inter Partes Review (IPR) hearings. This is a situation where a patent holder, an inventor, has an invention and they believe that someone else is infringing that. Most infringing is actually performing by making, using, selling, or importing their invention into the US without permission. That is patent infringement under 35 USC 371.
Now, all that said, PTAB is one avenue, apart from the federal court, to use to make sure that patent claim is actually still valid. If that patent holder I just talked about were to try to sue the likes of Microsoft or Amazon, saying that they’re infringing their invention, those big companies will take that patent to the PTAB and try to invalidate it before they can even get to considering whether it’s infringing or not. So that’s the first inquiry, and as I mentioned Andre Yongku in his speech the other week, he mentioned that the USPTO is taking a very careful look at when they allow certain cases to be heard before the PTAB.
What that means is called institution and instituting whether it qualifies, whether it meets the bar of whether those judges are actually going to be able to review the case or not. So much more to come about USPTO and policy today. We talked about the Patent Trial and Appeal Board and how even being able to get into those sessions is gonna be quite helpful and what the changes are coming down the road. If you have any questions about infringement, if you’ve got an invention, please get ahold of us. Our website is boldIP.com, and we’re always available for a free 30-minute consultation. I’d be happy to chat with you. I hope you all have a wonderful rest of your day. I’m your host J.D. Houvener of the Bold Today Show. Go big, go bold.