ABA, associations raise concerns on proposed rulemaking for patent appeals

A series of proposed changes restricting access to America Invents Act post-grant proceedings before the Patent Trial and Appeal Board are contrary to congressional intent and create unnecessary hurdles for businesses that are sued by entities on weak patents that should have never been issued, the American Bankers Association and six financial and service sector trade associations recently wrote in a letter to the U.S. Patent and Trademark Office. The associations—working under the collective title of the Quality Patents Coalition—said the proposed changes would add numerous requirements for petitioners that were not adopted by Congress and create a framework that would make discretionary denial routine and ubiquitous, shielding claims that are likely unpatentable from review.

USPTO in April issued an advance notice of proposed rulemaking seeking public input regarding proposed changes to discretionary institution practices, petition word limits and settlement practices for AIA proceedings. The 2011 law made several substantial changes to the nation’s patent system, including the creation of the trial and appeal board, to provide a less-expensive alternative to district court litigation to resolve patent issues. However, the coalition said that the proposal exceeds the agency director’s authority and departs from the text of the AIA, along with congressional intent, by imposing new limits on post-grant proceedings that would reduce their efficiency and effectiveness.

The coalition expressed concern that the proposal would lead to businesses diverting resources that are better spent considering the validity of patent claims to endless disputes over threshold questions regarding discretionary denial. Moreover, the proposal would create ample opportunities for gamesmanship. For example, parties could leverage many of the proposals to elicit a discretionary denial and shield patents from post-grant review.


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