Proposed Changes to USPTO IPR Rules
The USPTO is considering modifications to the rules for inter partes review (IPR) and post grant review (PGR) proceedings.
Ostensibly this is to “better align… with the USPTO’s mission to promote and protect innovation and investment…”.
The proposed changes give the USPTO discretionary denial over who can institute challenges to patents. The PTO wants to take “appropriate steps to curb abusive actions” and “limit unnecessary and counterproductive litigation costs.”
Discretionary Denial and Challenger Eligibility
The Federal Register detailing the proposed changes specifically mentions third parties asking for reviews of patents even when they don’t have a concrete stake in the outcome.
If passed, the Director will have wider discretion to deny proceedings. Ostensibly, this is to “ensure that certain for-profit entities do not use the IPR and PCR processes in ways that do not advance the mission and vision” of the USPTO. The proposal also specifically mentions protecting “individual inventors, startups, and under-resourced inventors.”
Evaluating “Substantial Relationship” in Challenges
The USPTO is considering adopting a “substantial relationship” test to evaluate whether a challenger is sufficiently related to a party in a challenge. If the relationship is deemed not substantial enough, discretionary denial can be applied.
Protecting Individual Inventors and Startups
On the surface, the rule changes seem laudable enough: limit unnecessary and counterproductive litigation and protect the little guy. But it is through the IPR process that patent trolls can be held accountable. It allowed members of the public to challenge bad patents, a process that trolls hate.
While the proposal’s language is about protecting the little guy, it has been very easy for even the most sue-happy trolls to represent themselves as “small inventors”. The Patent Office may pat itself on the back for protecting the little guy. But they may, in fact, be hampering the public’s ability to challenge patent trolls.
Balancing Innovation Protection and Public Rights
While the mission of the USPTO is indeed to protect inventors and foster innovation, a bad patent, which is a 20-year monopoly on an invention, does the opposite. The public needs the right to challenge such patents.
Related articles on the IPR: Update on IPRs