MANAGING IP

Rani Mehta June 24, 2022

Counsel from Blackbird, Unified Patents, two other companies and a law firm debate what new ways to avoid Fintiv mean for petitioners and patent owners

The USPTO’s new Fintiv guidance has addressed some patent challenger concerns but ultimately left the policy’s backers and critics frustrated over what it will mean for Patent Trial and Appeal Board proceedings, say in-house counsel. 

The office published its guidance on Wednesday, June 22, addressing the rule introduced in 2020 that compels PTAB judges to discretionarily deny inter partes reviews (IPR) on the basis that parallel district court cases will finish first.

The doctrine’s critics wanted to see Fintiv eliminated, whereas its supporters didn’t want the rule weakened. The guidance did neither of those things, which meant it amounted to a compromise that satisfied no one.

There were several provisions set out in the memo that counsel found noteworthy, however.

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