“I find it really surprising that the PTO, which publishes the proposed rule, says it is not the proposed rule. It is not the PTO’s responsibility to do so and start over in the rulemaking process.” – Congressman Zoe Lofgren
U.S. Patent and Trademark Office (USPTO) Courts, Intellectual Property, and Surveillance The House Judiciary Subcommittee on the Internet heard today about the intent of USPTO Director Kathy Vidal’s recent advance notice of proposed rulemaking. , saw some confusion in Congress (ANPRM) explained changes to the Patent Trial Board (PTAB) process, subcommittee members said she may have exceeded her authority I suggested that I think
House IP Subcommittee: This is our work
Many subcommittee members said they wanted the types of changes included in ANPRM to pass through legislative bodies. For example, Rep. Nathaniel Moran (R-Texas) expressed concern about the separation of powers, stating, “I see a lot of excesses that I don’t really care about.”
Vidal sought to clarify that the ANPRM includes proposals from both stakeholders seeking feedback and the USPTO, some of which will eventually be included in the rulemaking formula to be issued later this year. I mentioned that it may not be reflected in notifications (NPRM). However, members of Congress seemingly dismissed this explanation, and throughout the hearing he likened the ANPRM proposal to his NPRM. Subcommittee chair Darrell Issa said towards the end of the hearing, “I still view it as proposed rulemaking.
Rep. Russell Frye (R-SC) asked Vidal whether ANPRM should be put on hold pending a thorough investigation by the subcommittee, but Vidal said that ANPRM would be subject to stakeholder feedback. is just an additional tool for collecting and proposed rulemaking.
Rep. Zoe Lofgren (D-California) shared Moran and Frye’s concerns, saying Vidal’s explanation of Congressional intentions for the ANPRM disagreement was startling and “extremely bizarre.” rice field. Lofgren specifically responded to the proposed approach of creating an exception to discretionary refusal if an inter partes review (IPR) petition was filed within six months of the statutory ANPRM, rather than one year of which he was statutory. I was interested. Vidal said the ANPRM contained provisions and “a myriad of options” proposed by stakeholders, and officials would like to hear feedback on whether they have the authority to proceed with the proposal. explained again. But Lofgren wasn’t convinced.
“That’s the rule you proposed,” Lofgren said. Why are you proposing something that is against the law? Vidal denied there was anything inconsistent with the law, and reiterated that ANPRM he sees as an opportunity for interested parties to shape the rules, not the USPTO’s proposed rules. .
“I think it’s really surprising that the PTO, which publishes the proposed rule, says it’s not their proposed rule,” Lofgren said. , we can reconsider it, but it’s not the PTO’s responsibility to make the law and re-do it in the rulemaking process.”
Rep. Thomas Massey (R-Kentucky) also actively questioned Vidal throughout the hearings, sharing his colleagues’ view that Congress should shape the law. I said I was dealing with a company.
Issa eventually asked Vidal to provide the names of everyone consulted in the process of compiling the ANPRM, so that the subcommittee could better understand the Office’s “deliberation process.”
The Politics of the Director’s Review
A number of subcommittee members also discussed the director review process.Earth Rex, Vidal is the first director to be confirmed by the Senate. Subcommittee ranking member Hank Johnson (D-GA) asked Vidal how she would ensure her decisions were free of political bias, and in an opening statement, Congress said her He said the PTAB’s decision was designed to be final and not subject to review by the Director.supreme court Earth Rex The decision “opened the PTAB to political influence.” he added:
“The extent of change in PTAB proceedings under various directors does not assuage my fears. The point of patents is to enable the planning, investment and realization of new inventions, and I am concerned that the law has become too subjective and dependent on the specific views of various government agencies. This is not a stable foundation for our innovation ecosystem to rest on.”
Johnson was also concerned about the issue of fraudulent trademark filings due to the process put in place by the Trademark Modernization Act of 2020, but applicants are also learning how to abuse it. Vidal agreed, but he said that between December 2022 and March 2023, 19 U.S. licensed attorneys would be registered for investigation related to signing fraudulent trademark applications. and said they had been referred to the Discipline Bureau. “We are aware of it and are on top of it,” she said.
Issa: Why don’t you go directly to rulemaking?
Discretionary denial practices were perhaps the most frequently raised topic at hearings and also the number one concern Vidal heard from litigants during the PTAB process during his first term, the Year of Listening. said. As such, she issued Interim Guidance on Discretionary Denial and is now issuing her ANPRM. However, Issa wondered if this approach was appropriate. He asked Vidal:
“Many of your ‘proposed rulemakings’ include items that have become part of the informal operating procedures of the PTO. and they are now out as comments, do you think it’s appropriate to put them up for further comment when in fact you’re already doing them, or are we Do you think you should have gone straight to making the rules because you’ve already done it without going through the legislative process we’re doing on this side? Did Takadai legislate for you?
Vidal responded that issuing guidance and precedent decisions first would provide more clarity to the 230 PTAB judges who exercise her discretion by delegations. She said she has no ability to ensure otherwise that she is exercising her discretion in the manner in which she exercises it. I believe, and even if there is guidance, it is only intended to commemorate current practice and will not be involved in policy making,” she added.
Subcommittee members also questioned the need to amend patent eligibility laws to remain competitive with China. Issues over courtroom shopping and trial times in the East and West Districts of the Texas Courts. Whether a standing is required to file a PTAB lawsuit. Also, due process issues raised by small businesses and inventors under Rule 36 of the Federal Circuit. On the latter topic, Massie referred to his January 2019 article on IPWatchdog for the record.
In written testimony submitted to the U.S. Chamber of Commerce’s Global Innovation Subcommittee, Vidal’s request for comment on robust and credible patents, including many of the provisions affecting patent practice in the life sciences, is not open to public hearings. It was practically not touched upon at the meeting. The Policy Center (GIPC) said today it supports his USPTO’s work on inclusive innovation, but is concerned about “the intended action against the life sciences innovation ecosystem.” GIPC also said It “worries”On the scope and complexity of the USPTO Recent Prior Notice of Proposed Rulemaking on Submissions–Grant review process, Even if We will continue to consider the issues raised. ”
Vidal’s full testimony is available here.
