Summer Focus on Politics & Policies

As we move into the slower months of the summer in Washington D.C., here is a quick run-down of a number of hot-button IP legislative and policy matters.

  • 101American Axle presented the best hope for 101 reform coming from SCOTUS. The back of the hand provided by the Court (despite the gov’t recommendation) is exceedingly rare for a patent case. What this should tell you is that the Court is giving up, and leaving this matter to the legislative branch. As to that option, there was a Herculean effort to get something done a few years back that was ruined by extreme viewpoints (as is the way of DC these days). I have little hope anything will be done on the legislative front soon. With midterms on the immediate horizon, and the PTAB Reform Act on deck, look to 2023 or beyond for any legislative effort. That said, I wouldn’t hold my breath.
  • PTAB Reform Act – With Director Vidal providing a clear pathway to avoid discretionary denials, I would not expect to see more than a handful of such denials going forward. For example, where a petitioner refuses to file the full Sotera stipulation. As such, the bill simply would prevent the next Director from reinvigorating this practice. The other proposed changes in the bill, are simply not very impactful. There were some hearings on the Hill a few weeks back designed to show that the sides of the issue could be extreme, and that the Bill was a fair compromise. The invited speakers did their job in that regard. I expect the Bill to reach a floor vote in the fall session. I wouldn’t expect too much push-back given the limited set of changes. This is Leahy’s IP swan song, and the Bill has traction.
  • PTAB Abuse – As I predicted a few months back, the new Director Vidal has turned her attention to the OpenSky debacle. The Director has now sought amicus input, which is more about optics than anything else. I suspect that agency knows where it is going, but, the public input will help insulate it from critiques on making agency policy through adjudication that is independent of public input. A new test will seemingly be established as to when the PTAB is being abused. I proposed my ideas well in advance. I expect some kind of factor-based test along the lines that I outlined, OpenSky to be sanctioned with termination (and probably more), and the PQA IPRs to be allowed to continue. (By not staying these proceedings, that writing seems already on the wall. Don’t count that money yet VLSI!)
  • Notice of Proposed Rules – The USPTO has promised some Notice-and-Comment Rulemaking on the Director Review process post-Arthrex, which should be relatively straight forward. The agency has also recently proposed some adjustments to the calculation of PTA in light of certain IDS filings. I don’t see anything else on the immediate horizon.

Should make for an interesting fall, just in time for IPWatchdog live 2022 in Dallas.