Post-grant reform is a hot topic in US patent practice right now. Senator Patrick Leahy’s Restoring the America Invents Act (RAIA) bill, introduced in September 2021, remains pending but lacks the support of Senator Thom Tillis, the ranking member of the Senate Intellectual Property Subcommittee, and has become bogged down....
Post-grant reform is a hot topic in US patent practice right now. Senator Patrick Leahy’s Restoring the America Invents Act (RAIA) bill, introduced in September 2021, remains pending but lacks the support of Senator Thom Tillis, the ranking member of the Senate Intellectual Property Subcommittee, and has become bogged down. Reform discussions were recently held on Capitol Hill – possibly a start to a fresh legislative push – though information on content, purpose and progress remains slim. The RAIA has attracted controversy as having the potential to drastically favour patent challengers and place excessive limits on the Patent Trial and Appeal Board (PTAB)’s use of its discretionary power to deny the institution of inter partes
reviews, opening the door for serial petitioners. In addition to Tillis, others have voiced opposition to the RAIA, including Lamar Smith, who was the House author of the America Invents Act in 2011; he expressed concerns that, under the RAIA, the PTAB could be used to harass patent owners. Issues around Section 101 also continue to be a focal concern for IP stakeholders, given the lack of clarity and consistency in the jurisprudence. In a bid to address confusion and frustration around patent eligibility analysis, the USPTO recently introduced a Deferred Subject Matter Eligibility Response pilot programme, which allows applicants to defer responding to a pending Section 101 rejection and focus on other aspects of the office action, the addressing of which may nullify the subject matter eligibility rejection and therefore narrow the area of contention between applicant and examiner; this would streamline the patenting process and improve the prosecution history of applications that would otherwise have a subject matter eligibility rejection on their record. A third important area for discussion has been patent litigation venue: according to Docket Navigator data for 2021, a remarkable 31.39% of US patent cases were filed in the Western District of Texas. Much to the chagrin of defendants, Judge Alan Albright’s courtroom is popular for, among other things, its fast pace and reduced likelihood of transfer to other courts. Concern around the size of Albright’s docket (18.83% of all US patent cases) was recently brought to the attention of the Supreme Court by Leahy and Tillis, who raised fears that plaintiffs were able to select the judge who will hear their case; the response was to raise the issue with the Judicial Conference. The question of why such a high proportion of cases is filed in Waco is an important one; patent holders potentially feel that too much is stacked against them elsewhere, which is a bigger-picture issue that potentially needs to be addressed. Other important patent news coming out of the United States includes the recent confirmation of former Winston & Strawn litigator Kathi Vidal as Director of the USPTO and Undersecretary of Commerce for Intellectual Property; with some of the debates outlined above taking place, she assumes her role at an important time. One conversation point for market commentators was the position she might take on the Biden administration’s draft policy statement on standard essential patents (SEPs), which was subject to much criticism, including from three former USPTO heads, who felt it was balanced significantly against SEP holders.