The Senate Judiciary Committee recently held a hearing on the nominee for the next Director of the US Patent and Trademark Office (PTO). The hearing comes at a time of increased focus on the process for having the PTO review patent claims to determine their validity, particularly through the inter partes review (IPR) process.
The re-introduced PREVAIL Act – and recent policy changes by the interim PTO Director, aim to make it harder to use IPR – a tool designed to weed out patent claims that should never have issued in the first place.
I served as chief IP counsel for then-Chairman Leahy during the formulation and enactment of the America Invents Act (AIA), which created the IPR process. The new process was a consensus-based improvement for both patent owners and challengers over the reexamination process it replaced. Congress should proceed cautiously in considering changes that would reduce its effectiveness.
The IPR process established by the AIA reformed the pre-2011 system, in which reexamination challenges were easier to initiate and often delayed related litigation. This was unfair to legitimate patent owners, who had trouble getting their rights vindicated. But the challenges also almost never reached conclusion because of a massive backlog, which ultimately was unfair to patent challengers trying to clear away invalid patent claims.
The theory underlying the new IPR process was this: the PTO grants patent claims on an ex parte basis. In court, those patent claims are then entitled to a judicial presumption of validity because the expert agency – the PTO – made the determination to issue those claims in the first place.
However, if the PTO itself is later presented with evidence that persuades the agency that it is reasonably likely that one or more of the patent claims should not have been issued (i.e., because one or more claims likely fails to meet a condition of patentability), then – as the expert agency that originally issued those claims – the PTO should have both the authority and the obligation to correct the mistake. And in this administrative review context, the claims at issue are not entitled to a presumption of validity precisely because the PTO is in the posture of an expert agency reconsidering its own prior decision.
Having assessed that it probably committed an error in granting a limited monopoly in the form of a specific patent claim, there is simply no reason, as some argue, for the expert agency to then refuse to reconsider that error or to give itself deference in such reconsideration.
Post-issuance proceedings should not be dividing the patent community. There are some principles on which we should all agree: patents on true inventions should be strong and easy to enforce; patents that give a monopoly right for anything other than a true invention harm competition. And, therefore, providing an efficient and reasonable way to challenge patents that are overly broad or not genuinely novel is essential to a well-functioning system.
By focusing on common-sense principles, we can foster an environment where innovation thrives, businesses compete fairly, and the patent system serves its true purpose.
