The excessive scope of the PTO’s Advanced Notice of Proposed Rulemaking (ANPRM) on AIA Trial practices is deliberate as it provides favorable optics for the current administration.
Presenting all ideas to the public as opposed to culling out the more (ahem)… “creative,” showcases the open mindedness of the administration—particularly to patent owners. Perhaps a savvy move from a public relations perspective; not so much on the side of demonstrating competence to Congress. As the Director learned a week or so back when testifying before the House Judiciary, public proposals that appear to directly conflict with the AIA statutes, and/or encroach upon the role of the legislature are plainly unwelcome. That said, the warnings of Congress must be reinforced by stakeholder submissions.
The time is now for stakeholders to separate the wheat from the chaff through submitted comments (and in the process provide the agency political cover for the obvious cuts). And an absolute avalanche of comments is coming by the June 20th deadline.
I’ll post thoughts on as many of the proposals as possible here (on an ongoing basis), starting today with the worst of the worst. At the very top of the list of bad ideas is one that has the agency seemingly questioning the PTAB Trial Section’s very purpose.
The ANPRM proposes giving deference to a prior patent reexamination of a patent subject to an IPR petition, explaining:
The Office is also considering whether to extend this proposal [deference to prior adjudications of the courts] to including prior adjudications of validity through ex parte reexaminations requested by a third party other than the patent owner or the patent owner’s real party in interest or privy.
First, the agency lacks the authority to codify restrictions on IPR filings in conflict with the AIA statutes. The AIA provides, under the heading “Multiple Proceedings,” 35 USC § 325(d). This statute enables the agency to avoid reviewing the same question in an AIA trial that was previously presented to the Office in a previous proceeding. This statute is also expressly extended to patent reexamination. The statute goes on to recite that the agency may stay, terminate, or consolidate a (presumably) previously filed reexamination in favor of an IPR. Congress has plainly contemplated how to treat AIA trials filed after a patent reexamination. The PTO cannot rewrite the statute to provide a defacto rule that an earlier reexamination somehow precludes an AIA trial.
Moreover, this particular proposal, even if possible, turns the entirety of the AIA on its head.
AIA trials were designed to replace the previous patent reexamination system. This evolution stemmed from universal dissatisfaction with patent reexamination as an alternative to litigation. For example, the reexamination process was criticized by Patent Owners as lacking necessary cross-examination and responsive briefing options. Patent challengers complained that reexaminations timeline was too lengthy and courts were refusing to wait. Notably, this was a prior reexamination system that included an inter partes option (no longer possible). This proposal would not only throw the system in reverse, but would go back in time to the 1990s (before inter partes reexamination existed). Discarding the AIA to go backward two evolutions in the law is non-sensical.
The entire purpose of AIA trial proceedings is to provide a more intensive and fulsome review of ex parte records (typically original prosecution). Trials are instituted when new information is provided to the agency that was not previously considered in assessing patentability, or a mistake is demonstrated in the ex parte record. Elevating one ex parte record (reexamination) over another (original prosecution) makes no sense whatsoever.
Further, 100s of claims can be added in patent reexamination with relative ease. Unlike traditional prosecution, examiner prior art searching is not commonplace. Instead, only the art submitted with the reexamination, or already in the record is applied. Why should these new claims be insulated from a more thorough review?
Finally, ex parte reexaminations may be filed anonymously. It is unclear how the agency would police unscrupulous entities seeking to insulate their patents by submitting half-hearted requests.
I could go on, but you get the idea.