Article I, Section 8 of the U.S. Constitution states a patent is an “exclusive Right”, the very essence of a property right. In 1882, the United States Supreme Court said in James v. Campbell that “[a patent] confers upon the patentee an exclusive property in the patented invention”. The same quote was cited by the Supreme Court as recently as 2015 in Horne v. Department of Agriculture. Eight sitting Justices on the Supreme Court have stated that a patent is a property right. And black letter law (35 U.S. Code § 261) states “patents shall have the attributes of personal property.”
For more than two centuries, the U.S. Constitution, black letter law and precedent construed a patent as a property right. This is important because it is the nature of property rights that enables investment in early stage startup companies, especially those with cutting edge technologies in highly competitive fields like pharmaceuticals, biotech, smart phones, enterprise software, internet, semiconductors and other technologies critical to our infrastructure, military and much more.
After passage of the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) unilaterally wrote rules of the Patent Trial and Appeal Board (PTAB) to radically favor petitioners over patent holders. While many objected at the time, few could predict the full extent of what would become the one-sided PTAB process. PTAB operations have devastated the patent system with more than 95% of patents subjected to a PTAB tribunal having at least one claim invalidated, which often destroys the enforcement value of the entire patent. The Federal Circuit has reprimanded the PTAB for acting arbitrary and capricious, and also for completely ignoring the statute and creating their own standards. The PTAB can and does refuse to consider timely-submitted evidence, and there is no right to amend despite the statute saying otherwise. Now in recent days we’ve learned one Administrative Patent Judge was even hearing cases and writing decisions favoring a former client he represented in patent infringement defense matters just a few years ago. The PTAB has gone rogue.
According the U.S. Chamber of Commerce in their annual report on patent systems, the U.S. patent system is now in 10th place, tied with Hungary, and they attribute this drop from 1st place in all previous years primarily to the PTAB.
The secondary market for patent assets has the effect of driving capital to startup companies as well. This is because investors are assured that in the event an invested company fails, the patents can be sold to recover the investment. Recently, patent purchasers Intellectual Ventures and WiLAN have both exited the patent market. The secondary market for patents is collapsing and this is having a negative effect on the capitalization of startup companies, particularly those who must protect their inventions with patents and those with talent in research & development that choose to invent, not make, products and services. This parallels other inventors such as Thomas Edison and John Moses Browning. The reason is simple, without the prospect of an exit strategy angel and VC investors choose to put money to work elsewhere. Who can really blame investors in patented technologies given the disaster that has become the U.S. patent system and the gauntlet of the PTAB allowing (if not encouraging) multiple parties to gang up on patent owners over and over again.
As the USPTO has weakened our patent system, China has strengthened its patent system. The resulting uncertainty is pushing venture capital that would have funded American startups to China, thus funding startups there. Along with that capital goes the great America innovation engine that has for centuries propelled the United States to lead the world in new technologies. Today China leads with twice the number of patent applications and twice the number of patent cases than the U.S. There is little doubt that our national security is being damaged as we will be forced to purchase Chinese technology for critical infrastructure and potentially our military.
MCM, Security People and Oil States are cases challenging the constitutionality of PTAB administrative tribunals. In short, they ask if a property right can be destroyed by an administrative tribunal without due process and without a jury. In full knowledge of the economic damage, the U.S. Constitution, black letter law and 220 years of precedent, the USPTO doubled down by arguing to the Federal Circuit and the Supreme Court that a patent is public right, not a property right, and as such the PTAB’s administrative tribunals are legitimately destroying patents.
This conduct by the USPTO defies its own mission – to promote the progress of science and the useful arts. USPTO policy is itself destroying that progress, yet the USPTO argues against judicial review in an attempt to continue its destruction of the patent system.
Fundamental incongruities exist within the operation of the PTAB that affect the integrity of the patent system, and the future of American innovation. For example:
- USPTO processes encourage institution of PTAB review. The decision to institute PTAB review is made by the same PTAB judges who perform the review. This encourages institution because PTAB judges must review a sufficient number of patents to remain employed. It also biases the decision to invalidate the patent because it is not likely for a person to institute a PTAB review by declaring the patent is more likely than not to be invalid, to then find the patent valid.
- No guidelines exist related to the institution of PTAB review. It appears no heed is paid to “take into account … the same prior art or arguments previously …presented to the Office.” (35 U.S.C. §325(d)) as PTAB reviews are instituted on the same art already evaluated in examination.
- No guidelines are available related to decisions to institute based on caseload or schedule, including consideration of the 12 month requirement.
- No guidelines exist relating to evaluating petitions for abuse or harassment like limiting the number of petitions considered by the PTAB on the same patent/family (e.g., 125 petitions on 7 patents held by Zond, 18 petitions of a single patent held by Paice).
- PTAB judges apparently have no code of conduct requiring recusal when they have previously represented a party.
- Former USPTO Deputy Director Russ Slifer recently posted a host of recommendations for the PTAB. The PTAB appears to have operated for 5 years without USPTO direction on these issues.
- The USPTO is stonewalling the industry. Freedom of Information Act (FOIA) requests are routinely ignored, refused or gamed. Recently, a FOIA request was submitted for the disclosure of standard operating procedures, prior versions of standard operating procedures and records indicating why changes were made to standard operating procedures related to assigning PTAB judges to panels for CBM or IPR reviews. The USPTO responded with 57 pages where 52 pages were withheld. The five pages not withheld were largely not informative and were partially redacted.
- Post Grant Review (PGR) provides a clear measuring stick of USPTO performance over the last 4 years since PGR was only available for patents filed after March 16, 2013. Therefore patents subjected to a PGR were examined entirely under the current Director’s tenure, with the latest case law and MPEP rules, and under the Enhanced Patent Quality Initiative. According to the USPTO’s own statistics, 58% of patents petitioned for PGR are more likely than not invalid. Even the Post Grant Outcomes pilot cannot solve the problem as examiners add PGR decisions invalidating a patent as references on continuations of the same patent and then issue the patent on the same subject matter despite the invalidation in the PGR.
- The PTAB exposes an issued patent to the same standard as in examination. There is no deference to or defense of the work of the examiner, which is contemptuous of the work done by the examiner and of the inventor who paid for examination. Inspection prior to issuance necessarily must be stricter than inspection after issuance. It is a basic premise of quality control (6 sigma, TQM, lean, etc.). Invalidating issued patents is not a form of quality control and does nothing to improve patent quality. Patent quality can only be improved in examination prior to issuance. Yet, the USPTO is diverting money paid for examination and maintenance to the PTAB where patents are destroyed.
The same agency that takes inventor money to grant patents takes infringer money to destroy them. This creates an appearance of double dealing, and inventor belief that the USPTO is breaching the “grand bargain” of the patent system. Inventor confidence is at an all-time low because inventors are lured away from using trade secrecy protection, but then given nothing in return for disclosure. The effect of PTAB on inventors is devastating. Since institution of PTAB, over 50% of inventors simply quit rather than suffer the financial and stressful indignation of post grant invalidation.
The Trump administration has ordered elimination of duplicative and wasteful programs, recently outlined in the OMB memo “Comprehensive Plan for Reforming the Federal Government and Reducing the Federal Civilian Workforce”. It is clearly wasteful for an agency to invalidate more than 50% of its own output. The PTAB is also duplicative in light of §282 of the Patent Act.
The current management of the USPTO has wrecked the patent system. Immediate action is required.
- Cleaning up the PTAB and restoring integrity to the patent system requires a Director without a stake in the PTAB, and the current Director is responsible for the nightmarish results. A new Director must be willing to do whatever is necessary and permitted by law to reign in the PTAB.
- The USPTO must ask Congress to hold hearings on the issue of patents as property rights versus public rights before filing any more briefs. This is not a matter of agency discretion, but one that must be carefully deliberated by the legislative branch. Only Congress can navigate the public interest, the Constitutional limitation, and the case law that precludes removing the property status of patent rights.
- The Director should immediately stay all PTAB Trials and institution decisions until Congress or the Supreme Court have sufficiently addressed these issues.
Join the Discussion
25 comments so far.
Tesia ThomasMay 6, 2017 12:03 pm
Where would the US military have been in the Middle East without color night-vision tech?
Between a rock and a hard place.
CANVS Corp. has been fighting with the DoD for over 20 years, longer than I’ve been alive!
The US military just settled with CANVS to end allegations.
This is evidence that the US government loves and uses PTAB.
And, why did CANVS have such a hard time? Because the tech is bound by ITAR/EAR restrictions. They couldn’t show anything online to backdate.
No one in the world except them and the military could know anything about the tech. That’s why the military ‘had its way with them.’ Literally. For 20+ years.
Stop asking the government to help you, inventors. They are the enemy as well as the corporations.
The only hope is that the US Supreme Court declares all of this in violation of the Bill of Rights- takings clause mostly.
Yes, the Supreme Court is part of the government but maybe they have some integrity and will see this for what it is. They are the last and only hope.
The executive and legislative branches aren’t going to do anything.
Our only hope is the judicial branch. Someone has to do literally everything right as far as protecting IP and get there. I’m trying to.
Thankfully my tech is 100% mechanical and the closest prior art is at least 40 years old.
Tesia ThomasMay 6, 2017 11:35 am
It appears that the only way to protect oneself is to…
1. Do a fantastic prior art search
And, I mean that if you’ve invented a “duck” or other water fowl then, you need to find “fish” prior art too. (Analogy for things that aren’t in the same family but are loosely related…by water, in the example.)
2. Not do anything with software
3. Patent app. file (PCT, provisional) & then Publicize your invention in such a way that will create archives on the internet
This deters stealing a little bit because claiming “you never had this product” wouldn’t work if there exists a back dated internet article.
Also, a lot of these arguments about the what the government should do misses the point that the U.S. government, just like huge corporations, preys on inventors.
Check the history of government agencies misappropriating IP and stealing tech.
Just search for any of the multitude of IP infringement suits that inventors have filed against the government.
This happens in Canada, Europe, and more countries. Europe has UPC which starts hearing cases this year, and that is arguably more favorable to inventors than the PTAB. But, it is very similar to the PTAB.
The U.S. government loves “First to File” and PTAB. If an inventor sends in an idea for an SBIR grant (which Phase I ONLY accepts ideas) then the government can use that idea. Ideas can’t be patented.
If an inventor does get a patent for his/her implementation of an idea then the U.S. government will launch PTAB proceedings against that inventors patent. It is happening right now. DoD especially loves PTAB.
The government wants the PTAB just as much as a multi-billion dollar corporation.
If you currently have a patent then you need to fight. There’s a chance that you could change legislation with your case. That’s what my company is trying to do.
But, if not, then just stop inventing. Don’t invent for your employer. Don’t invent for yourself.
Cut them off.
Our military and economy is strengthened by the fruits of inventors’ intellectual labors.
Let them do it all themselves since they want to steal and claim what is not theirs.
Without inventors, the military and economy will surely be weakened. And, sometimes you just need to experience the terrible in order to know what mess you’ve gotten yourself into.
Paul F. MorganMay 3, 2017 04:05 pm
“hmmmm,” yes, surprisingly still only a minority of defendants in patent infringement suits file IPR petions. Also, a significant % of those IPR petitions are denied.
Richard BrunnerMay 3, 2017 08:24 am
Great article Paul. This is a corruption of our system which will derail our economy all the way down to the unemployed workers we would have provided jobs for, so there will be fewer people in our markets able to buy. No one talks about the health of our markets.
I have also seen the offer of funding if the product is made in China. Why aren’t we doing this here to help ourselves.
Our system was set up to help the inventor to protect his ideas and create jobs. IP is a personally created property, and the USPTO was set up to protect us, the little guy. Destroy our system and it will destroy our economy. Politicians don’t even get it.
A lawyer just told me that “companies are only buying products they can’t knockoff or steal”. Isn’t it nice to know that fraud is running our system?
AnonMay 3, 2017 06:27 am
With all due respect, Mr. Morgan is a hypocrite and mouth-piece cheerleader of IPRs in their current state.
He “does not see” that which he does not want to see, all the while being only too willing to “step into the fray” and defend the current state of IPRs as a “good thing.”
He is only interested in telling the young child to hush and has no interest in “seeing” the very thing that he is trying to hush the child about.
hmmmmMay 2, 2017 09:27 pm
From the article: “Since institution of PTAB, over 50% of inventors simply quit rather than suffer the financial and stressful indignation of post grant invalidation.”
Except the  paper shows a 50% decrease in future patenting AFTER an ACTUAL loss of patent rights due to Federal Circuit invalidation. Nowhere does  support that inventors in general are dropping out rather than suffer potential post-grant invalidation – only those who have previously suffered a Federal Circuit loss. Nowhere does  discuss PTAB or IPRs.
hmmmmMay 2, 2017 09:12 pm
Gene: “If the PTAB is correct that has to mean patent examiners are doing a woefully terrible job”
That’s a woefully unsupported conclusion (i.e. classic selection bias fallacy). The PTAB’s 95% one-or-more claims invalid rate is among the small selection of issued patents challenged under IPR – that number does NOT include those issued patents NOT challenged under IPR for whatever reason (e.g. inability to show invalidity, lack of commercial interest, etc).
DavidMay 2, 2017 06:12 pm
And who consider to be “recognized constitutional law experts?”
Epstein has put his name to the constitutional challenges several times.
What else does Sir Paul F. Morgan require before he is willing to enter the fray?
Remember Paul, the suit doesn’t make the man.
DavidMay 2, 2017 05:55 pm
That’s unfortunate. Afraid you might catch a bruise?
Paul F. MorganMay 2, 2017 04:26 pm
Anon, I see no point in “partaking in any actual discussions on the Constitutional infirmities,” or even reading such arguments if they are coming from disgruntled patent attorneys rather than recognized constitutional law experts presenting modern Sup. Ct. authority arguments to even get to first base with a cert grant to overrule a bi-partisan act of Congress.
Gene, re “If the PTAB is correct that has to mean patent examiners are doing a woefully terrible job. The problem is the USPTO doesn’t believe that and neither does Director Lee.”
Of course they won’t say that, but they cannot possibly deny, and have not denied, that the prior art being found and asserted in IPRs by those motivated by being sued for patent infringement is regularly better than the prior art found by the application examiner in the far fewer hours the examiner had for searching for prior art and evaluating it against the [initial] claims, and may well not conduct any further prior art search for application or RCE amended claims. As you yourself have wisely noted again recently, one needs to do their own prior art search before filing patent applications.
Gene QuinnMay 2, 2017 03:40 pm
You can say that about my “editorial policy” if you want. You are, of course, wrong.
On many, many occasions I’ve talked about low quality examination and the low quality of patent examiners:
In the second article above in particular I point out that the USPTO and Director Lee seem to be oblivious to what such high PTAB invalidation rates mean. If the PTAB is correct that has to mean patent examiners are doing a woefully terrible job. The problem is the USPTO doesn’t believe that and neither does Director Lee. So you can say that we have picked a horse and are ignoring things, but that is a lie. What is true, however, is the USPTO wants to have it both ways. They want to say the PTAB is brilliant and never wrong and all the patents with claims invalidated are examples of bad patents. But they never want to then admit that has to mean that patent examiners are awful. So either the PTAB is always right and they are a bunch of geniuses, which means patent examiners are truly atrocious and doing a terrible job, or there is a problem with the PTAB narrative.
If you actually read the PTAB decisions, notice the fundamental denial of due process, observe the conflicts of interest we are now learning about, and open your eyes and see they create their own standards and ignore the statute (which the CAFC has slammed them for) the narrative really should be that the PTAB is a rogue tribunal. In fact, any objective individual looking at the facts would really have to come to that conclusion.
So why exactly do you defend the PTAB? Why don’t you stop talking in the generic and start specifically defending PTAB actions. You can start with them refusing to consider timely submitted evidence, or refusing to apply the definition of a CBM patent in the statute, or deciding cases dealing with former defense clients, or saying the statute only gives one a right to ask for an amendment not a right to amend. These and so many other examples demonstrate abuse of power and that is before you ever get to how they find everything, no matter how innovative, to be obvious because there is no limit to the number of references a genius PTAB judge will combine to find a claim obvious.
Go ahead. Defend away.
AnonMay 2, 2017 02:26 pm
Please stop trying to hush the child who is proclaiming that the emperor is not wearing any clothes.
Your conclusion of “useless complaints” is most definitely not shared by those working to eliminate IPRs as a fundamentally botched process.
As you refuse to partake in any actual discussions on the Constitutional infirmities, it behooves you to at least not tell others that they should not discuss the same.
AnonMay 2, 2017 02:23 pm
Benny, you accused me of not reading your comment (untrue, as I did read your comment and my reply addresses what you stated – please do not be pedantic about any type of “exact word used”), and then you yourself turn around and you do not read Gene’s reply to you: it is NOT that “it cuts both ways,” as Gene emphasizes that the depths of the cuts goes against the position that you are trying to establish. Your tactic merely agrees with Gene but ignored what he is actually telling you.
Try to be less anti-patent or at the minimum try to read what people are actually posting and note that just because an exact word may not be in your post, the meaning of your post is being addressed.
Paul F. MorganMay 2, 2017 02:01 pm
Curious, even if the big difference in claim rejections by technologies was actually due to Google [et al] lobbying [rather than Bilski and Alice, et al, over-claiming of pure end results, etc.] do you think that lobbying “with the former administration” will somehow stop with the present administration? Also, have you been paying attention to what kind of patent legislation proposals in recent years have been proposed by leading Republican House members?
What is needed are serious actual suggestions for specific rule-making and procedural improvements in IPRs, which the PTO says it is now seeking, instead of 4 more years of failed attempts to kill the entire system and useless complaints.
BennyMay 2, 2017 12:23 pm
Gene (at 6),
Indeed, it cuts both ways. However, the editorial policy here seems overwhelmingly concerned with the false negatives, and tends to ignore the false positives.
CuriousMay 2, 2017 12:04 pm
VERY much lower for patents in the pharmecutical, chemical, physical and mechanical arts
How nice, the PTAB is siding with the likes of Google (i.e., Director Lee’s former employer) more frequently. Its nice to see that Google’s lobbying dollars with the former administration didn’t go to waste.
CuriousMay 2, 2017 12:01 pm
Then we will surely see writers on this site complaining that the USPTO refuses to issue patents – precisely those patents that would otherwise end up being invalidated at the PTAB
From my many years of experience, I see that an underlying problem with examiners and the PTAB is that they see a patent claim and say to themselves “that cannot be patentable — I need to reject [affirm].” However, instead of finding good prior art to support their initial “gut feel,” they concoct factually and legally unsound arguments to support their rejection.
As a patent attorney, one of my jobs (during prosecution) is to look at the claims, look at the cited prior art, and make a determination whether the applied prior art either anticipates or renders obvious the claimed invention. If it is good art, then I amend or abandon. However, I rarely see good art. Instead, I see really bad findings accompanied by really bad arguments — those I will fight every time.
What the examiners should be doing is spending more time finding better art and less time concocting Rube Goldberg-type arguments (that are mostly unexplained) in order to reject the claims. For their part, the PTAB could further this goal by smacking down these lousy rejections. However, these days, the PTAB will go to great lengths in hand-holding the Examiner’s rejections by mischaracterizing the law, ignoring Appellant’s arguments, and/or employing the broadest unreasonable interpretation. The PTAB’s actions (in affirming these unreasonable rejections) only encourage more unreasonable rejections.
Examiners should be spending most of their time finding the BEST prior art. If they cannot find good art, then they should allow — not spend time figuring out to combine a thimble, screw driver, and stapler to make an improved laser.
There is this false impression at the USPTO that a claim that has been rejected at least once (or has been subject to multiple Office Actions) has been given a better examination that a claim that has never been rejected. Instead, the USPTO should focus its efforts on finding the BEST prior art — not on finding any art that can be massaged into a rejection.
The best prior art produces both the best rejections and provides confidence that the claims allowed in view of the best prior art will survive subsequent challenges.
Paul F. MorganMay 2, 2017 11:38 am
Just a few nits: Re: “Since institution of PTAB, over 50% of inventors simply quit rather than suffer the financial and stressful indignation of post grant invalidation.” ? This cite 11 for that claim is a study which says that it it based on Fed. Cir. [judicial] patent invalidations. Also, the vast majority of inventors on U.S. patents are company employees on company owned patents, and there has been no reduction in U.S. application filings.
Also, the IPR claim rejection rate cited has not been that high in recent months, and is VERY much lower for patents in the pharmecutical, chemical, physical and mechanical arts.
Scott McQuarrieMay 2, 2017 10:54 am
Outstanding and timely article. it should be read by staff of every senator and congressperson. Those who serve on relevant oversight committees in both houses of Congress should be targeted. As well, it needs to be read by the White House staff.
There is a reason the Framers referred to patents in the Constitution and that for centuries patents have been held to be property subject to the takings clause. This article illuminates it. In short, the political branches of government (Congress and the Executive) cannot and should not be trusted with taking not just physical, but also the intellectual, property of citizens. Only an independent judiciary, using the substantive and procedural safeguards that are built in to the judicial branch, can reliably and consistently afford Due Process of Law. That is their job, and they should (and must), be allowed to do it. Anything short of that ignores what the Framers intended.
Remedial action would certainly benefit the citizen-inventor (who has no voice in government), create jobs, help to stimulate economic growth, and improve the standard of living for all Americans. It would also, not coincidentally, bring us closer to Constitutional compliance. Ending this nightmare is long overdue.
Gene QuinnMay 2, 2017 10:40 am
You say: “If the USPTO cleaned up its’ act and did a better job of examination (which it should) we would see far less patents issuing.”
What you write assumes that the only mistakes the USPTO makes is when it issues patents. Newsflash… if the USPTO were to clean up its act MORE patents would issue, not fewer. The USPTO is burying a lot of innovation that absolutely should be patented. Just look at the appeals to the Board. In many of the software related Art Units examiners are routinely reversed with respect to each and every bogus rejection they make. And those are just on the cases where the applicants have the time and money to stay the course after being jerked around by recalcitrant examiners for years.
So let’s not pretend that the Office only makes mistakes when they issue patents. And let’s also not pretend that the PTAB is always right when they invalidate patents. They invalidate at a much higher rate than district courts because they apply unrealistically high standards to patents that are supposed to be presumed valid.
BennyMay 2, 2017 08:39 am
You didn’t actually read my post before replying, did you? It contains no reference to a “current complaint”.
AnonMay 2, 2017 08:13 am
You employ a fallacy of projecting a complaint where no evidence exists for your projection.
In other words, a straw man.
It is NOT that examiners “refuse to issue patents” that is the main current complaint that you seek to imprint. Instead, it is that examiners “refuse to issue patents that deserve to be issued under the law.” Don’t let the short hand dissuade you from understanding the actual concerns. Do apply some critical thinking.
As typical, you decide to take a rather anti-patent stance, and as equally typical, you get it wrong.
BennyMay 2, 2017 05:22 am
“Patent quality can only be improved in examination…”
If the USPTO cleaned up its’ act and did a better job of examination (which it should) we would see far less patents issuing.
Then we will surely see writers on this site complaining that the USPTO refuses to issue patents – precisely those patents that would otherwise end up being invalidated at the PTAB
Invention RightsMay 2, 2017 12:43 am
Where are the scholars on this subject? And why are there so few challenges in the courts? How did Congress and the Federal Circuit reconcile PTAB with §261 of the Patent Act? Was it even deliberated? Our patent system has been stolen out from under our collective noses. I hope the Supreme Court can find and bring it back!
Chris GallagherMay 1, 2017 04:22 pm
Great job and right on …as always.