USIJ Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board

The Alliance of U.S. Startups and Inventors for Jobs (‘USIJ”) responds herein to “Request for Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board,” published 10/20/20 at 85 F.R. 66502–506, Document Number: 2020-22946 (“PTO Request”).  USIJ supports the initiatives undertaken by the current leadership of the PTO, including the current initiative to which the PTO Request is addressed. 

Before addressing the specific focus of the PTO Request, however, we want to emphasize the critical importance of patents to entrepreneurs, inventors and their investors and financial backers that throughout our history have been disproportionately responsible for many of the “breakthrough” inventions that have allowed the U.S. to dominate the “progress of science and the useful arts,” as specifically called out in Article I, Section 8, Clause 8 of the U.S. Constitution. In discussing the role played by patents in this nation’s enormously productive economy, it is important to bear in mind the economic reality of what is meant by that language as to the “useful arts.”  Scientific research and experimentation have been ubiquitous throughout history, not just in this nation but the entire world; what has made America unique is our creative ability to translate scientific learning into new products and services, which no other nation has ever matched.  For more than 200 years, patents provided one of the fundamental building blocks of our industrial policy, precisely because reliable and enforceable patents established a fertile climate that encourages risk taking and investment in the implementation of new ideas and the creation of new products.

Prior to the confirmation of the current Director of the PTO, a large and growing segment of the inventor community and its investors no longer considered patent protection as a sufficiently reliable foundation upon which to justify the inherent risks associated with moving a visionary but unproven idea or a laboratory scale experiment to widespread production.  The current leadership of the PTO, under the guidance of Director Iancu, has made substantial progress in correcting that perception, most importantly by calling public attention to the need for reliability and predictability of patents and recognizing that clarity and balanced procedures for managing Post Grant Reviews (“PGRs”) and Inter Partes Reviews (“IPRs”) are essential. 

As will be apparent from this response to the PTO Request, USIJ applauds the effort by the PTO to erect a more rational legal structure around the unbridled discretion to invalidate patents that previously was exercised by individual panels of the Patent Trial & Appeal Board (“PTAB”).  The introductory portion of the PTO Request describes in considerable detail many of the circumstances in which precedential opinions related to the institution and trial of IPRs have been used to make the process more transparent and predictable and more likely to result in fairness to both patent owners and petitioners.  USIJ welcomes and supports those efforts.  We also recognize the need, however, to reduce this prodigious effort to formal rulemaking, thereby providing at least some measure of assurance to those inventors, companies and investors that are entirely dependent on their patents to justify the expenditure of time and resources in risky new projects.