Recent News - USPTO Proposed Changes Threaten Constitutional Guarantees

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Aug 31

Hughes Media Law Group

USPTO Proposed Changes Threaten Constitutional Guarantees

Posted by Hughes Media Law Group

Last week the US Patent and Trademark Office (USPTO) requested comments on a proposed change to the Inter Partes Review (IPR) system which allows for third-parties to challenge a patent’s patentability. In order for an invention to be patentable it must be useful, novel, and nonobvious. The proposed changes concern the last two requirements: novelty and obviousness.

The system, as it exists today, consists of three administrative patent judges (APJ) evaluating the third-party’s Inter Partes Review petition and if granted, the same three APJs will preside over the trial. The initial evaluation and ruling on the petition are not appealable to the Federal Circuit; however, if the IPR proceeds to trial, the final written decision is appealable.

The proposed changes would reduce the number of APJs evaluating the petition to one, but would leave intact the panel of three APJs to preside over the trial. The changes would also not affect an appeal of a final trial decision. At first glance, reducing the number of judges evaluating IPR requests seems like a move toward judicial efficiency because the PTAB judges would have more time to devote to other proceedings.

However, the proposed changes may ultimately present some constitutional challenges. Toussaint Mvricks, HMLG’s patent attorney, offers a critique to the IPR changes. “There is something inherently unfair and potentially in violation of the Constitution's due process guarantees in an executive agency's power to decide whether to initiate post-grant proceedings where such decisions are unappealable to an Article III court.  There is certainly value in achieving process efficiencies, but doing so at the expense of a patent owner's right to appeal a decision by an APJ not to institute a post-grant proceeding seems to create a situation where the costs outweigh the benefits, even more so since issued patents do not enjoy a presumption of validity in such proceedings. Two major negatives cannot possibly provide any positive on a net-net basis.”

The comment period is open until October 26, 2015. Information about submitting comments directly to the USPTO can be found here or continue the conversation on our Facebook page