Statement for the Record on USPTO's ANPRM

On behalf of the members of the Quality Patents Coalition (QPC) we appreciate the opportunity to state for the record our strong opposition to the United States Patent and Trademark Office's (USPTO) Advanced Notice of Proposed Rulemaking (ANPRM) which would upend the system for the administrative review of patents created by Congress in the "America Invents Act." The proposed rule, if implemented, would severely restrict the ability of operating companies to challenge low-quality patents at the Patent Trial and Review Board (PTAB), and empower non-practicing entities to assert low-quality patents in district court without consideration of a review at the PTAB. This proposal appears based on the false assumption that the AIA gives the PTO director wide discretion in implementing the law to the point of essentially rewriting the law.

When Congress passed the AIA it created a quicker and less costly system that could operate in parallel with district court litigation, where any party could petition for review of a patent based upon a "reasonable likelihood" showing that the patent was invalid based on prior art. However, since the AIA was passed the USPTO has repeatedly attempted to limit access to that system. The ANPRM is yet another example of this.

Among the many problems with the ANPRM are that the proposed rules:

• Create a "standing" requirement previously rejected by Congress;
• Create a heightened "compelling merits" standard for petitions filed more than 6 months into the statutory window for seeking PTAB review if petitioners wish to avoid discretionary denials;
• Require petitioners to waive their right file other PTAB petitions or reexamination requests despite no such requirements in the AIA;
• Advance the point at which estoppel attached from final decision to institution;
• Allow the PTAB to deny petitions based on speculation as to when parallel district court litigation will be resolved, despite the fact the AIA contemplated parallel litigation, litigation calendars routinely change, and the district courts apply a higher standard for invalidation.
• Block companies from seeking PTAB review of patents based on the activities of other somehow vaguely "related"—yet legally unrelated companies that previously challenged the patent; and
• Immunize large numbers of patents from PTAB review in a way that is ripe of abuse and fails to accomplish its stated goal of benefitting small business.

Download the statement for the record to read the full text.