by Dennis Crouch
Sen. Leahy and Sen. Cornyn have introduced the “Restoring the America Invents Act” designed to further address problems caused by the USPTO’s issuance of “poor-quality patents.”
The proposal is basically a wish list of patent-killers seeking to cancel patent rights via inter partes review.
Key elements of the proposal:
- Removal of Discretional Denials of Institution. The proposal would substantially limit PTO Director’s discretion to deny institution. The new provision would state that “a petition that meets the requirements of this chapter shall be instituted …” The Director would maintain limited discretion to deny or alter institution based upon multiple proceedings involving the same patent or member of the same patent family pending before the Office. The statute would create a rebuttable presumption of consolidation.
- Expanding the Scope of Inter Partes Review. Currently, IPR’s can only focus on patentability grounds “raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The proposal would expand this to also include “admissions in the patent specification, drawings, or claims” and also “statutory or obviousness-type double patenting.”
- More Powerful Stays. The new statute would list factors that a district court should consider when determining whether or not to grant a stay, all the changes would tend to promote stays of the litigation. The provisional would also permit an immediate right to appeal the district court’s stay decision.
- Codifying the Rules on Amending Claims: The patent owner will have the burden of proving the patentability of any amended claim, including Sections 101, 102, 103, and 112 before the PTAB who will act as an examiner in that regard.
- Prior Dismissal of Without Prejudice: A lawsuit involving the patent that was dismissed without prejudice would no longer trigger 1-year deadline for filing an IPR petition.
- Codify a procedure for Director Review under Arthrex. Although the procedure requires the director to provide a “written opinion” setting forth any reasoning, it does not appear to require director review or reasons for denial of review.
- Rejecting Return Mail. The proposal would add “a governmental entity” to the people who can petition for IPR. This would overturn the Supreme Court decision in Return Mail which held that the U.S. Gov’t was not a “person” for the purposes of this portion of the statute.
- Extend timing of ending proceedings before the office until the conclusion of any appeal. 325(e)(1).
- Expanded Estoppel against the Patent Owner: “The Office may not issue to a patent owner any claim that is not patentably distinct from a claim that was issued and was subsequently—(i) found to be unpatentable; or (ii) canceled in any proceeding before the Office, including under section 135, 251, 253, 301, 311, or 321.’”
- Attempting to Eliminate Outside Influence on Panels from Within the USPTO: “EX PARTE COMMUNICATION.—An officer who has review authority, supervisory authority, or disciplinary authority with respect to an administrative patent judge of the Patent Trial and Appeal Board (or a delegate of such an officer), and who is not a member of a panel … shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel, except as allowed under the Code of Conduct for United States Judges.”
- Standing to appeal: The new law would attempt to cobble-together additional injury by presuming injury in fact based upon the estoppel, etc.
- No Standing then No Estoppel: The new law would open the door further to speculative filing of IPR petitions. In particular, the proposal would modify the law so that a party who lacks standing to appeal its loss before the PTAB would not later be estopped based upon the IPR outcome.