by Dennis Crouch
With the America Invents Act of 2011 (AIA), Congress handed the USPTO a central role in implementing major legislative patent reforms. Those include both designing the structure and procedure for post-issuance review and also taking the first steps at interpreting the new rules of patentability under the first-to-invent system. For the past few decades, it has been the Federal Circuit’s assumed role to monitor and moderate USPTO activity and decision-making. However, the Supreme Court’s recent repeated rejections of Federal Circuit decisions has significantly reduced that court’s perceived strength. Further, the express grant of authority in some areas severely limit the Federal Circuit’s review capabilities. These factors come together to suggest that the PTO is now largely operating without direct checks on its behavior outside of the Administration.
Filling the Oversight Void: Given that members of the Republican party will soon control both the Senate and House of Representatives, I expect this gap in oversight will be at least partially filled by Congressional Oversight. Adding to the likelihood of oversight is the partisan dynamic associated with shifting into the final two-years of the Obama administration with a high-level of conflict expected between the powerful branches of government.
Unlike Federal Circuit review, rigorous Congressional Oversight would likely not focus on merits of individual decisions but instead on policy implementation, budgetary allocations, overarching policy goals and agency activities.
House Judiciary Chair Bob Goodlatte spoke on this point a couple of months ago:
As the PTO carries out its Constitutional mission, we need to conduct appropriate oversight to ensure that our IP laws are being implemented fairly and in line with Congressional intent.
In recent years the PTO has been tasked with implementing the America Invents Act (AIA). The AIA was the most significant reform to U.S. patent law in my lifetime. I believe that it is imperative for this committee to examine the rules and procedures that the PTO has adopted to implement this important law, in particular the various post grant proceedings called for in the AIA.
Congressional Oversight by itself cannot compel the President to change course. However, the expectation is that oversight (and the threat of oversight) will encourage a change of behavior and also raise public awareness of administrative issues. A difficult issue is that we need to drill down beyond the soundbites and Congressional Oversight often remains at too-high a level. A second difficulty is that none of the Congressional subcommittees are directed toward USPTO policy (or intellectual property administration in general).
The benefit of Congressional Oversight is also that it provides Congress with the opportunity to investigate and perhaps gain a better understanding of the system before passing legislative reforms.