Senator Patrick Leahy, who is chair of the Senate IP Subcommittee, has released a statement concerning the bipartisan proposed PTAB Reform Act of 2022. The statement provides:
Patents drive our economy, allowing innovators to do what
they do best while knowing they can reap the benefits of their hard work.
Good quality patents thus give small businesses and inventors certainty that
they can defend their inventions from others who didn’t put in the work.
Without the rights guaranteed by patents, the engine of our economy, American
innovation, simply would not be as strong.
Given the power that a patent conveys, though, a patent
issued by the U.S. Patent and Trademark Office needs to actually represent
innovation. There are serious consequences for our entire economy when
the system permits enforcement of a patent that never should have issued.
Vermonters and small businesses all across the country have suffered these
consequences. Several years ago, an out-of-state company asserted
poor-quality patents against dozens of Vermont small businesses and
non-profits, demanding payments for each and every time a business scanned a
document and then emailed it. It was a scam. And it was an egregious abuse of
our patent system.
That is why I am proud of the work we did in 2011to pass the
Leahy-Smith America Invents Act, which allowed the public to take their
concerns about a questionable patent back to the Patent Office for a more in-depth
review. Through proceedings created by the Leahy-Smith Act, the
scan-to-email patents were brought back to the Patent Office and invalidated,
allowing Vermont companies and non-profits to continue their important work.
The Patent Trial and Appeal Board, or PTAB, created under the Act,
resolved those disputes in a way that was faster, less expensive, and more
accurate than a district court because the disputes were overseen by
technically trained patent judges under a strict deadline. In the past decade
of the PTAB’s existence, the public has brought thousands of patents to the
Patent Office’s attention, and the Patent Office has expertly addressed
validity, reinforcing the strength of high-quality patents and cancelling ones
that never should have issued.
As with any big new undertaking, that success has also
brought new questions. And all enacted laws—particularly those dealing with
ever-evolving technologies and science—need to be revisited and updated from
time to time. That is why I am thrilled that Ranking Member Tillis, Senator
Cornyn, and I just last week introduced the PTAB Reform Act of 2022. We
gathered feedback from participants in the patent system, including the public
broadly and businesses across the country covering a vast array sectors and
technologies. We looked at concerns from all corners and presented a
series of different options for addressing them. This bill, the product
of months of hard work and compromise, addresses the biggest concerns of
stakeholders from across the spectrum. This bill will update the PTAB so
it can continue its important work into the next decade and beyond.
This is important legislation for a number of reasons.
One big question it addresses: If a petition to the Patent Office to
review a patent is meritorious on its face, should the Patent Office decline
review anyway? Many believe that all meritorious petitions should result
in a review. Many others believe that it is harassing to patent owners to
have the same members of the public able to request review of the same patent
repeatedly over time, when the patent owner has already defended the
patent. We addressed these issues—as we often do in the Senate—through
compromise. While meritorious petitions to review a patent should generally
be granted, serial petitions over time from the same or related parties will
not be allowed.
Another big question: Who has the authority to make a
final validity decision, civil-servant PTAB judges or the politically appointed
Director of the Patent Office? While the Supreme Court last year resolved
that the Director is the final decision-maker, it left open questions
about how the Director may make decisions. This bill
ensures that the decision-making process must be open to the public. The
public has a right to know when independent PTAB judges are making a decision,
and when a politically-appointed Director is making a decision. We should not
have a patent system where any given PTO Director can influence and decree
decisions non-transparently and behind the scenes.
Our bill also addresses a concern raised by small business
patent owners: They had to pay to apply for a patent and then may have to
pay again to defend it at the PTAB. This is expensive, and we want to
help small businesses shoulder the expense. Thus, if a small entity has
not already decided to undertake the expense of litigation, the Patent Office
will cover the expense of a PTAB proceeding for that small business under our
bill.
. . .
I know that Ranking Member Tillis and Senator Cornyn share my
belief that the patent system should work well for all Americans and all
sectors of our economy. I look forward to continuing the bipartisan work
of our IP Subcommittee to help deliver real improvements to our patent system.
I want to leave behind an even stronger patent system that further empowers
America’s greatest natural resource: our ingenuity and innovation.