Administrative "Death Squads" for Patents? Assessing the New Administrative Procedures for Challenging Patents

Property rights in patented inventions are being struck down at an unprecedented rate in a new administrative forum. This new post-grant review procedure (PGR), instituted in late 2012, takes place not in a court, but rather in an administrative forum known as the Patent Trials and Appeals Board. The Board has invalidated the vast majority of the patent claims it has reviewed, around 80% by some measures.

The US Patent and Trademark Office appears to have erected a vast and expensive system for granting rights with one hand and taking them away with the other. The former Chief Judge of the nation's patent appeals court, Randall Rader, has called the Board a "death squad" for patents. Many businesses and their attorneys have commented that investors and corporate decisionmakers are re-evaluating their investments in R&D whose value is secured by patents.

Are these criticisms confirmed by the actions of opportunistic hedge funds and law firms? PGR challenges have no standing requirement -- they can be instituted by anyone. Hedge fund manager Kyle Bass has filed a PGR challenge against Jazz Pharmaceuticals after shorting the company's stock. PGRs are viewed as so deadly by investors that they reacted just as Bass hoped -- the stock's value plummeted. Similarly, law firms have been contacting innovative companies and demanding payments not to file PGR challenges against their patents.

This Teleform will discuss the expansion of the administrative powers of the Patent Office in establishing the Board, and whether this is another example of overreach by the executive branch that should be reined in via reform measures currently under consideration in Congress.

• Mr. Peter Cicala, Vice President of Intellectual Property, Chief Patent Counsel, Celgene Corporation
• Prof. Gregory Dolin, Associate Professor of Law, Co-Director, Center for Medicine and Law, University of Baltimore, School of Law
• Mr. Robert Sterne, Partner, Sterne Kessler Goldstein Fox
• Moderator: Prof. Mark Schultz, Senior Scholar, Center for the Protection of Intellectual Property, George Mason University School of Law, Associate Professor, Southern Illinois University School of Law

Call begins at 1:00 p.m. Eastern Time.

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