Patent Appeals Board Slaps Down Follow-Ons

In September, the Patent Trial and Appeal Board (PTAB) issued seven informational decisions. In each, institution of an inter partes review (IPR) under 35 U.S.C. § 325(d) was denied. The statute allows the Director to consider whether the same or substantially the same prior art or arguments previously were presented to the Office, and reject the petition on that basis. These decisions demonstrate the considerable discretion accorded the agency under the statute, says writer Scott A. McKeown of LexisNexis. He says the takeaways are that: the Board frowns upon follow-on petition filings that include issues and claims submitted in an earlier petition filing by a same petitioner; and on petitions that target claims subject to multiple, ongoing proceedings and/or appeals to the CAFC.