Amidst the clamor of surveillance reform and TPP Fast Track negotiations, Congress is still finding time to work out the kinks of patent reform. One of the big topics of the day: inter partes review (IPR). This procedure lets third parties (like EFF) challenge bad patents (like the one used to go after podcasters).
We joined Engine, Public Knowledge, and R Street in sending a letter [PDF] to the Senate Judiciary Committee urging them to strengthen the IPR procedure, making it more accessible to and a more powerful tool for those of us acting in the public interest.
Here's what we asked for:
- Lower petition fees for small and micro entities – Current petition fees stand at $23,000 just to institute an IPR challenge. This is before any legal fees. This price is prohibitively expensive for small and micro entities, for whom the Patent Office already offers a discount on many patent filings. The same should apply for IPR.
- Allow petitioners to file replies – Currently, a patent owner may file a response to an IPR petition, but the petitioner has no opportunity to reply to that response. This unfairly allows a patent owner to raise new, unexpected arguments that will go unanswered.
- Allow petitioners the right to appeal – In Consumer Watchdog v. Wisconsin Alumni Research Fund, the Federal Circuit held that a pre-AIA [America Invents Act] inter partes reexamination petitioner could not appeal an adverse decision but respondents are always able to appeal. If applied to IPRs, this creates an unfair asymmetry that should be addressed as it runs directly contrary to congressional intent in the AIA.
- Allow petitioners to raise challenges under 35 USC §§ 101 and 112 – Under current law, IPR is a very limited program, only allowing for challenges based on prior art in printed publications and patents. Numerous preAIA patents are likely invalid for other reasons, including abstractness and lack of definiteness, particularly following recent Supreme Court decisions in Alice v. CLS Bank and Nautilus v. Biosig Instruments. Petitioners should be able to use IPR to challenge patents on these grounds as well.
- Extend CBM to cover all preAlicepatents – The AIA’s Covered Business Method review program is the only Patent Office procedure through which many patents may be challenged under the recent Alice v. CLS Bank case. CBM is currently set to expire in 2020. The program should be kept open at least long enough for petitioners to challenge any patent that was issued before the ruling in Alice.
There have been recent efforts by members of Congress to cripple inter partes review. But with a huge number of poor patents being wielded against small businesses and individuals, we need processes like IPR to allow public interest groups to flush low-quality patents out of the system.