In passing and signing the America Invents Act, Congress and President Obama recognized the high costs and harms to innovation posed by invalid patents. To help combat the problem, the law creates three new programs that allow the public to ask the U.S. Patent and Trademark Office (or PTO for short) to reconsider the validity of issued patents based on new evidence and arguments: inter partes review, post-grant review, and a transitional program for review of business method patents.
To contribute to the dialog around how to implement these changes, we have submitted three comments to the PTO (two jointly with Cisco and Verizon) making suggestions on regulations that the PTO could issue to help these three programs achieve Congress’ goal, including:
- The creation of procedures and rules that allow patent challengers a full opportunity to develop invalidity arguments so that the PTO will have the information it needs to make an informed decision;
- Allowing companies harmed by threats of infringement (not just lawsuits) to use the new business method transitional program, including the definition of a broad category of eligible business method patents; and,
- Continued protection of prior user rights under the first-to-file patent system, without which companies would be forced to file patents on trade secrets and minor improvements so a later patentee could not stop them from using their own inventions.