Printed, Incentivised to Combine? Evident(ial) Challenges on Inter Partes Review Proceedings

In September 2018, the Patent Trial and Appeal Board (which hears inter partes review proceedings, analogous to EPO oppositions) established a “Precedent Opinion Panel”. The idea is to identify cases which could be regarded as have value in harmonising the approaches of different panels, an issue which is well known from the EPO. Brooke Wilner and Tim McAnulty discuss three recent cases considered by the panel, all taking a critical look at what is “sufficient evidence”. The first looks at what amounts to proof that a publication is a printed publication made available to the public by a specific date, and although specific to printed publications (a specifically US characterisation) also highlights that simple indicia such as a copyright notice with a date may, on their own not be enough. The second and third look at when it is legitimate to combine references – perhaps bringing US practice closer to the approach applied elsewhere. All three remind practitioners that evidence matters. Read the full article here.