The Patent Office Should Follow the Law, Not Re-Write it
November 4, 2022 | Alex Moss
You’d think the director of the US Patent Office has a responsibility to execute the law—not re-write it. But the previous director of that office instituted new policies that ignore, distort, or blatantly violate the law. In only six months, Kathi Vidal, the current US Patent Office Director, has improved the agency’s transparency and accessibility significantly. That’s a big deal. An even bigger deal would be to change—or eliminate—the unlawful procedures her predecessor imposed.
In keeping with Director Vidal’s engagement with the public, the Patent Office put out two requests for comment on important topics: (1) procedures for patent examiners to use when determining if an application is eligible for patent protection; and (2) procedures for the director to use when reconsidering Patent Trial and Appeal Board (PTAB) decisions about challenges to the validity of granted patents.
These very different kinds of procedures have one thing in common: former Director Andrei Iancu manipulated them in ways that deviated from the spirit and letter of the law. Worse, these deviations give advantages to huge companies that acquire and assert patents en masse at the expense of small businesses, nonprofit organizations, and individuals that create, commercialize, and depend on technology.
These procedures must be changed both to conform with the law and protect the public interest, which government agencies like the Patent Office are supposed to serve above all.
In comments filed by the Public Interest Patent Law Institute and the American Civil Liberties Union, we emphasized the need for changes that would make patent eligibility procedures consistent with the law. This starts with restoring the two-part test for patent eligibility that the Supreme Court has repeatedly applied. That test is straightforward, asking (1) whether the claimed invention is directed to something humans could not have invented—like products of nature, laws of nature, or abstract ideas; and (2) if so, whether there is an inventive concept that adds significantly more—enough to demonstrate an invention attributable to the applicant.
But the Patent Office has distorted that test. Further, it added its own step between those two, which tells examiners to grant claims if they claim any “practical application” of ineligible material identified in the first step. There is no basis in law for that step—and as long as it is applied, the Patent Office will continue granting patents in violation of law.
A number of other public interest groups similarly urged the Patent Office to make its procedures consistent with the law because of the harm ineligible patents cause for the public.
For example, the Public Interest Research Group (PIRG), explained that patent eligibility affects the public because it “directly impacts the way drugs are priced and whether competitors can enter the market which helps drive down prices for patients.” And it called for revisions because “the guidance currently contradicts controlling law . . . and works to create barriers to competition in the pharmaceutical market.”
The Organic Seed Alliance (OSA) explained that patent eligibility limits “are especially important for plant genetics because so much subject matter in the field is naturally occurring and/or results from applying natural laws.” Ineligible patents give “patent holders ….far-reaching control” over access to natural products and natural laws, which are necessary for many plant breeders, researchers, and farmers. The OSA also identified several examples of legally deficient patents, including one “heat-tolerant broccoli,” that claims “practically any broccoli plant with observable heat-tolerance, regardless of how it is bred or what its genotype is.” (This doesn’t make sense to me.) As a result, the patent holder has the right to monopolize a trait that occurs in nature, specifically in widely used (and consumed) broccoli plants.
The request for comments on procedures for reviewing PTAB decisions also drew an enormous response from the public: approximately 4,000 submissions were form submissions from individual members of the public. While these form submissions have garnered criticism, we think it’s a good thing that so many people weighed in--when given a relatively easy way to do so. Doing so does not burden the Patent Office; identical electronic submissions can easily be grouped together without requiring reduplicative or time-consuming assessments. The public should be commended for responding to requests for public comment as long as their responses are relevant, genuine, and respectful. (Lest our receptivity to relevant and respectful comments of all kinds invite accusations, let us clearly state that we had nothing to do with the form comments and have no idea who did.)
Our comments focused on a rule which authorizes the director to designate PTAB decisions precedential—which makes them binding on agency personnel and the public . Former Director Iancu changed those procedures in important ways, such as giving himself unilateral authority to make decisions precedential without giving the public any notice or opportunity to comment. In so doing, he violated the requirements of the Adminstrative Procedures Act in multiple ways, undermining principles of democratic governance and due process. The Patent Office does not have the power to restrict the public’s rights through decisions made in court-like proceedings when those decisions have been subject to neither notice and comment nor judicial review. That is especially true when those decisions apply laws in ways that expressly contradict Congress’s intent, as some Patent Office precedents have done.
Our comments urged the Patent Office to issue a request for comments specifically on its procedures for designating precedential decisions. Given Director Vidal’s commendable effort to solicit public feedback, there is every reason to make the same effort regarding these procedures, and no good reason not to do so. We will continue watching and advocating for the Patent Office to comply with the Administrative Procedures Act, America Invents Act, and Constitution’s guarantee of due process.
Based on Director Vidal’s early days as director, we are hopeful improvements will come.