US legislation threatens patent protections and future innovation

Recently introduced legislation, the “Restoring the America Invents Act (RAIA),” if enacted, would push the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office to grant more requests to institute administrative patent trials, according to Pharmaceutical Research and Manufacturers of America’s director of public affairs Tom Wilbur, writing on the trade group’s website.

Not only would the RAIA prohibit the PTAB from deferring to federal courts when there is an imminent district court trial that would resolve the issues, it would encourage federal courts not to move forward with trials. This would reduce the power of the federal district courts and elevate the PTAB over presidentially-appointed federal judges.

While supporters of this legislation inaccurately characterize their proposal as a way to address drug pricing, the fact is that discretionary denials of IPRs under Fintiv – a precedential decision by PTAB that created factors for PTAB judges to rely on in deciding whether to institute an administrative proceeding or instead defer to active litigation in federal court – are relatively rare in the biopharmaceutical industry and have little if any relationship to drug pricing. According to a recent report, only a minuscule 8 out of 604 relevant PTAB trial institution decisions had mentioned Fintiv.