“We are trying to take action on what we have asked our stakeholders, even if that action is making decisions that things are working as they are. I’m not sure where you’re trying to land the . [for instance], but we’re considering all of that and moving forward. – Cathy Vidal
The United States Patent and Trademark Office (USPTO) today issued an Advance Notice of Proposed Rulemaking (ANPRM) indicating that it is considering changes to the American Invents Act (AIA) procedure before the Patent Trial Board (PTAB) Did. Perhaps most notably, one of the proposals seeking comment concerns the creation of rules that allow for discretionary denial of inter partes review (IPR) proceedings. The IPR and PGR processes are conducted in a manner that does not advance the USPTO’s mission and vision to foster innovation, or the intent behind the AIA to improve patent quality and limit unnecessary and unproductive litigation costs. It is ”
References to “certain for-profit non-competitive bodies” seem to imply bodies such as unitary patents, RPXs, and other defensive aggregators. USPTO Director Kathi Vidal made it available to the press to answer questions about ANPRM, but neither she nor her staff commented on the content of the proposal throughout the rulemaking process, and therefore she To her IPWatchdog, indeed, the description refers to such an entity. Instead, she said the intention was to strike the right balance.
“Either proposal goes back to the USPTO’s mission and intent behind the AIA,” Vidal said. “We are not targeting any particular kind of entity. We want the system to be balanced. The thing was to listen to all the stakeholders in terms of what, and I believe the suggestions out there give us the ability to shape the rules going forward. If so, we can address issues raised by any stakeholder that we hear from.”
Vidal said the ANPRM was compiled based on a Request for Comments (RFC) published in 2020 with the discretion to initiate a trial before the PTAB. The RFC had 822 comments. The USPTO will publish its position on the comments in 2021.
A USPTO document previously sent to IPWatchdog outlines five key areas that the proposal is intended to address.
“Key area 1: Our practice supports the USPTO’s mission to promote and protect innovation and investment, as well as a cheaper alternative to district court litigation to solve certain patentability issues while protecting against patentee harassment. To better ensure that it is consistent with Congress’ intentions behind the AIA to provide an alternative.
Key area 2: Strengthen and build on existing jurisprudence and guidance on exercising the Director’s discretion to determine whether to initiate AIA proceedings
Key area 3: Indicate the criteria used to determine “substantial relationship,” “substantial overlap,” and “persuasive merit,” and identify one or more categories of petition subject to discretionary denial. Provides definitions for thresholds to be applied.
Key area 4: Provide procedural enhancements
Key area 5: Clarify requirements for submission of settlement agreements.”
As part of Area 1, some of the specific proposals include restricting the entities that can participate in the IPR process, as already mentioned above. Limiting the impact of her AIA proceedings on “resource-starved patent owners commercializing their inventions.” imposes limitations on her IPR petition challenging patent claims previously affirmed in the district court or USPTO.and “spread out[ing] The USPTO will consider the petitioner’s relationship with other parties. ”
A detailed explanation of Key Area 5 states that this proposal requires the parties to submit “all settlement documents, if dismissal of the AIA proceedings is sought, whether the settlement takes place before or after the decision of the Authority.” indicates a request.
This could be a response to OpenSky’s attempt to settle behind the scenes using what Vidal ultimately determined was a sanctionable tactic.
Another potentially controversial proposal falls into key area 4. A background note sent by the USPTO indicates that the USPTO is considering allowing petitioners to pay higher fees for higher petition character limits. This may favor a series of well-funded petitioners who will pay the necessary costs to grant their petitions and invalidate their patents.
However, Vidal told IPWatchdog that the advance notice period will be used to narrow down the final NPRM proposal to be published after considering comments received between today and June 20, 2023. Told. NPRM. Vidal further explains:
“The comment period here is used to get feedback on the broader concept. As long as the comments are specific, we appreciate them too. Some of these suggestions are what we are proposing and some are from the public and we would like to hear a response. It’s going to be about drafted rules.”
Vidal also said the USPTO has no flexibility to extend the comment period at this time and has no plans to do so “unless there are extenuating circumstances.”
If it’s working, don’t fix it
Asked what’s next on her “year of action” agenda, Vidal said the patent office will soon be advancing an RFC on expanding and accommodating the patent bar and design patent bar concepts. rice field. Unlocking America’s Innovator Act, was signed into law last year. However, Vidal also said that not all RFCs published last year necessarily bring changes.
“We are trying to take action on what we have asked our stakeholders, even if that action is making decisions that things are working as they are. I’m not sure where you’re trying to land the . [for instance], but we’re moving forward with all that in mind, but moving forward doesn’t necessarily mean change. Same as Robust and Reliable Patent RFC. There were a lot of them. Now is the time to dig and consolidate all that information and decide where surgical changes can be made and where the system seems to work as well as it does now. ”
timing and process
All of this seems like a lot to accomplish in Vidal’s timeline. With about 18 months until a new government is voted on, she could be out of office. But she said her office does not have an estimated timeline for the final rule package. This comes after her 60-day comment period for NPRM and will not be published until the Secretariat considers this first ANPRM period comment. “There is no timeline,” says Vidal. “We want to act thoughtfully and cautiously and as quickly as possible.”
From this point on, anyone wishing to submit feedback on a proposal to be submitted to NPRM, or to submit comments on a particular proposed rule during the NPRM period, should do so through the federal eRule Making portal at www.regulations. So, “from this stage he moved to NPRM and we have a very clear public record of what we relied on when forming those rules,” Vidal said.
The year of listening is over and the Secretariat will no longer discuss the content. Vidal explained:
“To ensure equal access for all stakeholders and to ensure that the USPTO does not inadvertently shape the outcome, we encourage the media and individuals, including at stakeholder meetings, to I haven’t mentioned content or reasoning.While we’re in the rulemaking process, the Federal Register notice should speak for itself.Likewise, we want this process to be as transparent as possible. Therefore, all feedback must be submitted through the portal by June 30. Neither I nor my staff will accept feedback in any other way.”
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