In the final days of the administration, Andre Iancu, President Trump’s Director of the U.S. Patent and Trademark Office, is trying to push through permanent rule changes that would destroy the post-grant review system. Iancu is going all out to weaken “inter partes review” proceedings (or IPRs), which are the most effective mechanisms we have for getting the Patent Office to cancel patents it never should have granted in the first place. If these rules are adopted, the weakened IPR system will become a bonanza for patent trolls—and stay that way into the next administration.
We spoke out earlier this year about how the Patent Office was undermining the IPR process through bogus rules the Patent and Trial Appeal Board (PTAB) pushed through last year. Now, the Director is seeking to make these rules even more powerful and permanent. Now, we need EFF supporters to help us stop these dangerous changes.
Trump’s Patent Office Director, Andre Iancu, has instituted new policies that enable more patent abuse and help patent trolls. In 2018, Iancu claimed that small businesses and individuals who spoke out against patent trolls were spreading “scary monster stories.”
At EFF, we hear regularly from small businesses and individuals who are fighting off extortionate patent demands. We know their stories are all too real.
Now, Iancu is proposing rule changes that will sabotage the system that lets the Patent Office cancel bad patents. Congress created the IPR system in 2011, as part of the America Invents Act. It allows members of the public to go to the Patent Trial and Appeal Board and present evidence that a patent is invalid.
In the past several years, IPR has become the most important way to get the Patent Office to correct its mistakes. That’s crucial because more than 300,000 patents are granted each year, especially in the fields of software and technology; yet more than half of patents that go trial turn out to be invalid. The rate is even higher in IPR cases that go to a final decision: more than 60% of the time, PTAB judges find that all the patent’s claims are invalid.
The IPR process is faster and cheaper than fighting patents in a federal district court, which can cost millions of dollars and take years. That’s why EFF was able to use the IPR process to knock out the “podcasting patent,” whose owner falsely claimed to have invented the basic idea of podcasting—and then moved aggressively to force podcast creators to pay licensing fees.
If Iancu can push through this package of new rules, the PTAB will throw out many IPR petitions before judges even look at the challenger’s evidence.
First, the PTAB will be able to deny an IPR challenge anytime there’s a related court case against the challenger. This change alone could tear apart the IPR system, because it will let patent owners game the system. Patent trolls will be able to game trial schedules and then use them to get an IPR denied.
Second, the PTAB won’t consider more than one petition per patent—even if the petitioners are different with rare exceptions. The PTAB is supposed to consider any petition that satisfies the statute’s criteria. If the new rules pass, a patent that survives one IPR may never have to face another—even if the second IPR is based on new and stronger evidence.
Together with allied organizations, we spoke out against Iancu’s attempt to undermine the IPR process. But he’s pushing ahead anyway.
We need your help to protect IPRs. Right now, the rules are in a public comment period that continues until November 19th. We need EFF supporters to file a comment opposing the proposed rules.
The best comments will state in your own words how you’ve been affected by invalid patents, or why you’re upset that the Patent Office is considering unfair rules that are harmful to the economy and innovation.
We’re also including a sample statement that you can cut and paste. If you use the sample, please consider adding some details about your own experience or concerns with poor-quality patents or patent trolls.
Sample Comment:
I oppose the U.S. Patent and Trademark Office’s proposed regulations changing the nature of PTAB trials., Docket No. PTO-C-2020-0055.
[Write why you care about the public’s ability to fight low-quality patents. For example, perhaps you work in technology and bad software patents have affected you, your own small business, or your employment.]
First, if the regulations are adopted, people and companies won’t be able to challenge patents through the IPR process when they need to. The PTAB will be able to deny IPRs simply because of the timing of district court cases. This will allow patent holders to game the system and file strategic litigation to avoid IPRs. The PTAB should not give any consideration to the status of court proceedings when deciding whether to initiate an IPR.
Second, the regulations limit the number of petitions that can be filed against the same patent. That makes no sense. There will often be multiple challenge to the same patent, especially if it’s being asserted aggressively. Different challenges raise different evidence and sometimes address different claims. Congress’s intent in the America Invents Act was to reduce the amount of unnecessary patent litigation by allowing the PTAB to weed out invalid patents before a trial takes place. There should be no arbitrary limits on the number of petitions per patent.
The rights of technology developers and users are no less important than the rights of patent owners. When patents are evaluated in federal court, nearly half of them are found to be invalid.
Overall, PTAB trials must be fair, affordable, and accessible. When petitions are likely to succeed on the merits, they should be granted. What happens in the courts, or to other petitions, shouldn’t matter.
These proposed regulations will destroy the U.S. system for post-grant patent challenges. Wrongly granted patents are a major burden on the economy and drain on innovation. Every week, they’re used to threaten small businesses with extortionate licensing demands—especially people who make and use technology. To promote innovation, the Patent Office needs to improve the quality of granted patents, and to do that, we need the robust IPR system Congress designed.
This is just a sample; if you want to make changes or write your own comment entirely, that’s great! The most important thing is that you send a comment. It doesn’t need to sound perfect, and you don’t need to be an expert on patents.
At EFF, we speak up for technology users who are victimized by illegitimate patent threats. Today, we need your help.
Our “Take Action” button will link you directly to the government’s public comment form. You can read the details of the government’s proposed rulemaking here on the Federal Register’s website. Note that the comments filed with the government in this matter will become public records.
The Electronic Frontier Foundation is the leading nonprofit organization defending civil liberties in the digital world. Founded in 1990, EFF champions user privacy, free expression, and innovation through impact litigation, policy analysis, grassroots activism, and technology development. We work to ensure that rights and freedoms are enhanced and protected as our use of technology grows. Visit https://www.eff.org