Senator Leahy announces plans for legislation to change PTAB review
- Law Firms
- Says previous PTO director "hamstrung" ability to challenge patents
- Wants less "meddling" in IPR process, fewer discretionary review denials
(Reuters) - Senator Patrick Leahy, a Democrat from Vermont, said Wednesday that he would introduce legislation "restoring" the Patent Trial and Appeal Board's inter partes review process "to what Congress intended," addressing what he said were efforts to "hamstring" challenges to low-quality patents.
Leahy said he wanted to limit discretionary denials of IPRs, "bring more transparency to the process," and "prevent politicized meddling with IPR decisions." He made the remarks at an event in Washington, D.C. commemorating the 10th anniversary of the Leahy-Smith America Invents Act that created the PTAB.
Leahy's office didn't respond to a request for additional information, and a text of the bill wasn't immediately available.
The PTAB is a tribunal within the U.S. Patent and Trademark Office that has the authority to review patents' validity. IPRs before the board have become a relatively quick and cheap way for companies often targeted by infringement suits, such as Apple Inc and Google LLC, to try to invalidate patents.
Some have criticized the PTAB for favoring challengers over patent owners. But, Leahy on Wednesday said the board is "working to curb the type of abusive behavior that patents enable" from "bad actors" that use "poor patents" to "extort money from small startup businesses and nonprofits." He also said that IPR is important to address low-quality patents that drive up the price of prescription drugs.
Leahy said the last director of the U.S. Patent and Trademark Office, Andrei Iancu, "took actions that were designed to undermine the IPR process" that "hamstring the ability of the public to challenge poor-quality patents."
Iancu, now a partner at Irell & Manella, declined to comment.
The percentage of rejected IPR petitions rose under Iancu, in part based on PTAB precedent that gives the tribunal's judges discretion to deny reviews based on parallel court litigation and other factors. Apple, Google, Cisco Systems Inc, and Intel Corp sued the PTO in federal court last year over the rule, which they said violates administrative law.
Leahy said he intends to limit discretionary denials, which are "gamed often by parties."
President Joe Biden hasn't yet nominated a permanent PTO director. Biden's choice will have more power over the PTAB than previous directors as a result of the U.S. Supreme Court's June ruling in Arthrex Inc v. Smith & Nephew Inc. The high court said that PTAB judges had been appointed unconstitutionally, but solved the issue by giving the PTO director the authority to review their decisions.
"We have to ensure that future PTO directors are not able to unduly influence the process," Leahy said, because "whether a patent is valid or not" shouldn't "depend upon who serves as director."
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