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28 September 2015Americas

Global Pharma IP Forum: PTAB creation provides lessons for UPC

Concern surrounding how the Unified Patent Court (UPC) will operate echoes the worry that US patent owners had ahead of the Patent Trial and Appeal Board’s (PTAB) implementation, a US law firm has observed.

Anita Varma and Ed Kelly, partners at US law firm Ropes & Gray, told delegates at the Global Pharma IP Forum today, September 28, how the PTAB has evolved since it was introduced in 2012 as part of the America Invents Act (AIA).

Varma said that, following its implementation, the PTAB has become the number one forum for the revocation of patents in the US in 2015.

Kelly added that the PTAB, based at the US Patent and Trademark Office (USPTO) was a “good forum” to decide the validity of patents and that it can serve as a model for the UPC on how to create a new patent forum.

The number of filings for actions at the PTAB, including inter partes reviews (IPRs) and covered business method reviews, has been more than three times higher than the USPTO expected, leading the office, in Kelly’s words, to “buckle down” and tackle the backlog.

Kelly said that the office has been “aggressive” in its approach to recruiting the required number of judges to tackle the various petitions.

Despite this, the life sciences industry has been reluctant to engage with the process when compared to the hi-tech industry, Varma said.

But Kelly warned: “What you are worried about now regarding the UPC may not be the problems you deal with once it is introduced”.

Kelly cited the IPRs filed by hedge fund manager Kyle Bass’s organisation the Coalition For Affordable Drugs as an issue that was not anticipated by legislators and lawyers.

Since the beginning of the year, Bass has challenged patents owned by Acorda Therapeutics, Celgene and Jazz Pharmaceuticals, as well as other life sciences companies.

Bass scored a victory on Friday, September 25, after the PTAB rejected Celgene’s motion that his IPR petitions were an abuse of process.

Varma concluded that Bass’s challenges had provided a “huge shake up” for the life sciences industry.

The Global Pharma IP Forum is taking place at the London Stock Exchange today.