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EFF, Public Knowledge File Comments to Help Fix the Patent Office

EFF and Public Knowledge filed comments today at the United States Patent and Trademark Office discussing proposed changes to Patent Office trials. Our comments focus on making the process more fair and accessible for small entities that need to challenge bad patents.

Our first set of comments relates to proposed changes to inter partes review and covered business method review. Congress created these procedures in the America Invents Act, passed in 2011, to allow quicker and more efficient review of issued patents. We make a number of suggestion for how the current rules could be improved to promote fairness. For example, we argue that the rules should clearly require both petitioners and patent owners to support affirmative factual statements with evidence.

Our comments also address an issue that arose during the Patent Office’s nationwide “Roadshow.” This Roadshow was a joint presentation of the Patent Office and the American Intellectual Property Law Association (the “AIPLA”). The Patent Office touted [PDF] the Roadshow as allowing the public to “provide valuable input into how to improve the fairness and effectiveness of the AIA proceedings.” Unfortunately, the public had to pay a steep attendance fee of $375 to attend this Roadshow (the fee was significantly less if the participant was a member of the AIPLA). In addition, even though the Roadshow included an actual patent trial, there was no indication that the public could attend the trial for free (as at least one court has said the Constitution requires).

We were extremely disappointed in how the Patent Office carried out its Roadshow, both by affiliating with an organization with particular (sometimes controversial) views on patent policy and putting the price out of reach of many members of the public. In our comments, we highlight how problematic this was and our hope that the Patent Office will reconsider how it implements Roadshows in the future.

Our second set of comments relate to the Patent Office’s proposal to run a pilot program where trials are initially reviewed by only one judge (instead of a three-judge panel). We have reservations about this proposal. As our comments explain in more detail, there are many benefits of multi-member, collegial, bodies.

Some critics of the current process (such as the AIPLA) argue that having the same panel of administrative law judges making preliminary and final decisions in a proceeding creates bias against the patent owner. This is nonsense. The PTAB’s process is no different from federal courts where the same judge evaluates motions to dismiss, summary judgment, and then presides over trial. It would be extraordinarily wasteful for courts to bring in a different judge for every stage of a proceeding. The Patent Office should reject calls to create such a silly process for proceedings before the PTAB.

Finally, last month we submitted comments regarding the Patent Office’s implementation of guidelines relating to the Supreme Court’s Alice decision on abstract software patents. This is the third time we’ve filed comments on Alice (we filed our earlier comments in March 2015 and August 2014). We remain very concerned that the Patent Office is not applying Alice diligently and ineligible patent claims are still being issued. We highlight some recently issued patents that we believe are invalid under Alice. We also urge the Patent Office to provide clearer guidance on how the law has changed. Once they issue, bad patents are the favorite tool of the patent troll and are extremely expensive to invalidate. We need the Patent Office to do a better job in the first instance so that real innovators aren’t left fighting abusive patent suits.

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