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Guest post by Minku Kang and Omar Noureldin of the USC Intellectual Property and Technology Law Clinic at the USC Gould School of Law.
Last week, Public Knowledge filed comments with the United States Patent and Trademark Office ("USPTO") asking it to rethink the fees it has proposed for several patent review procedures. The comments are part of a series of rulemakings that the USPTO is conducting as it implements the America Invents Act ("AIA"), the landmark 2011 patent reform legislation. The comments were drafted and filed on PK’s behalf by the USC Intellectual Property and Technology Law Clinic.
The AIA created three new proceedings in which patentees, potential defendants, and third parties can challenge patents after the patent has been granted but before litigation—inter partes review, post grant review, and a temporary review program for certain types of financial patents—and the Act preserved a fourth proceeding, ex parte reexamination, in which parties can request that the USPTO to reexamine certain aspects of a patent’s validity. We filed this comment because the USPTO has proposed to charge excessively high fees for these proceedings, ranging from $15,000 to as high as over $150,000 for certain kinds of patents. Fees that high would price out many small businesses and non-profit organizations, meaning that these important proceedings would be disproportionately and unfairly available to highly capitalized, larger entities.
It is clear that, in establishing these proceedings through the AIA, Congress intended to create a healthier, more efficient patent system by enabling greater participation in the patent review process. Congress also gave the USPTO Director the broad authority to set patent fees and, in doing so, charged the Director with the responsibility to work towards the goals of the AIA. But the fees that the Office has proposed for these proceedings are too high to make them truly accessible to all stakeholders – even though Congress specifically mentioned these groups as intended beneficiaries of these proceedings. And Congress recognized that the cost of patent litigation, especially those involving patents of questionable validity, is often a crippling burden.
For this reason, Public Knowledge retained the USC Intellectual Property and Technology Law Clinic to draft and file a comment with the USPTO arguing that the Office should use its new, broad fee-setting authority to lower fees for these post-grant proceedings so as to allow all stakeholders to participate in the review process. Specifically, we urged the USPTO to consider the impact of such high fees on small businesses and non-profit organizations, and to revise the fee structure so as to accommodate these and other types of stakeholders who may be priced out by the proposed fees.
All small businesses, non-profit organizations, and other entities that may not have a lot of cash on hand must be able to utilize the post grant review proceedings as a means to challenge dubious patents effectively. Only then will we fully realize Congress’s goal of fostering a healthier, more efficient patent system that spurs innovation and avoids wasteful litigation wherever possible. We hope the USPTO will rethink its approach to these fees, and do whatever it can to ensure that all stakeholders can realistically access this critically important new component of the patent system.