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ARTICLE · 20 JANUARY 2017

Trends In IPR Institution: Part 2—Inter Partes Art Or Arguments

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The Patent Trial and Appeal Board (PTAB) has discretion under 35 US.C. § 325(d) to decline institution of inter partes review when "the same or substantially the same prior art or arguments"...

United StatesIntellectual Property
Virginia Carron
Virginia Carron
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The Patent Trial and Appeal Board (PTAB) has discretion under 35 US.C. § 325(d) to decline institution of inter partes review when "the same or substantially the same prior art or arguments" were previously presented to the U.S. Patent and Trademark Office. Although no statute or regulation provides guidance on what constitutes "the same or substantially the same prior art or arguments," it is possible to identify trends in the board's decisions to exercise § 325(d) discretion. When present, certain factors seem to strongly influence the board's decision. In this article Finnegan attorney  Virginia L. Carron and  Ashley M. Winkler consider the board's treatment of art or arguments that were first presented to the USPTO during inter partes proceedings.

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