Alex Moss | August 23, 2022

Twice last week, PIPLI asked the Patent Office to review patents that petitions from the public show are likely invalid. That’s what Congress intended when it passed the America Invents Act creating these review proceedings. It’s what the public needs to prevent invalid patents from needlessly blocking innovation, competition, and access to knowledge. Unfortunately, the Patent Office still needs to be convinced.

In one proceeding, the Patent and Trial Appeal Board (PTAB)—which issues decisions about whether to grant review petitions—agreed to review a petition that made a strong showing a patent pertaining to cancer treatment is invalid. After a Texas jury found no invalidity, the PTAB reversed its decision and de-instituted review. Our filing explains why that makes no sense: juries must defer to the Patent Office and require more proof from patent challengers for that reasons. When a jury finds no invalidity where the PTAB finds a strong case, the argument for review is only stronger. We hope the PTAB reconsiders its most recent decision and proceeds with the review it had rightly granted.

In another proceeding, the Director of the Patent Office, Kathi Vidal, asked for amicus briefs about how the PTAB should assess and respond to misconduct by members of the public requesting review. Our filing emphasizes the importance of granting review petitions based on their merits. Most importantly, the public benefits from the PTAB’s review of patents that are likely invalid whether they are cancelled for invalidity, removing undue restrictions, or sustained as not invalid, clarifying their scope. When laws are intended to benefit the public, their enforcement does not depend on whether those seeking to enforce them have done anything wrong. For example, if someone reports a robbery, the police don’t refuse to investigate if the caller has a stack of unpaid parking tickets. The same should be true of invalid patents: the PTAB should review them based on merits of a petition’s arguments and evidence, not the propriety of a particular petitioner’s conduct.

We also emphasized the urgent need to restore the public’s confidence in the PTAB’s decision making processes. The Government Accountability Office (GAO) recently released preliminary results of an ongoing investigation into the PTAB. Those results show that the majority (75%) of PTAB judges felt pressured to change their decisions to satisfy the preferences of the the former Patent Office Director (and/or those under his supervision). In some cases, judges who refused were removed and replaced, but instead of telling the public why (or even saying nothing), the Patent Office said the change was due to the judge’s availability. In other words, the Patent Office made changes to control the outcome of particular cases and hid the fact of their intervention from the public.

Meritorious review petitions should be granted, period. But if the PTAB is going to deny meritorious review petitions because of unrelated issues, such as the propriety of a petitioner’s conduct, the public must trust the PTAB’s decisions are independent, impartial, and accurate. In light of the GAO’s report, steps must first be taken to restore that trust. We have faith in the current Director and Patent Office personnel to make such changes and hope they do so with haste.