Inventors Tell USPTO to Let Small Entities Off PTAB’s Hook

“The current IPR process under the AIA and the PTAB’s role in canceling patents present significant financial and procedural challenges for inventors. To alleviate some of these burdens, the USPTO should reconsider its approach to evaluating micro and small entity classifications, ensuring that patent holders are not unfairly penalized due to PTAB funding.” – Molly Metz

commentsWith the comment period set to close on June 20, more than 11,000 comments had been filed as of Friday, June 16, in response to the U.S. Patent and Trademark Office’s (USPTO’s) Advanced Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices. Only 265 of those had been posted as of Friday, however.

The ANPRM was announced in April and includes a proposal that would authorize discretionary denial of inter partes review (IPR) proceedings “to ensure that certain for-profit, non-competitive entities do not use the IPR and PGR processes in ways that do not advance the mission and vision of the USPTO to promote innovation or the intent behind the AIA to improve patent quality and limit unnecessary and counterproductive litigation costs.”

This and other proposals in the ANPRM have been questioned by congress members, who have commented that they should be handling such changes. Representative Nathaniel Moran (R-TX), for instance, said in a recent House IP subcommittee hearing: “I’m seeing a lot of overstep I don’t quite care for,” and expressed concern about the separation of powers.

Among the comments posted thus far are numerous submissions by independent inventors, who have collaborated to make a common request for three proposals from the Office. Representative of these inventors is Molly Metz, founder of JumpNRope, who has been vocal about her feeling that the PTAB unjustly robbed her of her patent. “I am compelled to address the challenges faced by inventors like myself due to the current inter-partes-review (IPR) process under the America Invents Act of 2011 (AIA) and the Patent Trial and Appeal Board (PTAB),” Metz wrote in her submission on the ANPRM. She continued:

“The current IPR process under the AIA and the PTAB’s role in canceling patents present significant financial and procedural challenges for inventors. To alleviate some of these burdens, the USPTO should reconsider its approach to evaluating micro and small entity classifications, ensuring that patent holders are not unfairly penalized due to PTAB funding. This change would help maintain the integrity of the patent system and protect the rights of inventors.”

Metz’s comment explained that micro and small entity patent holders have little choice but to acquire funding for possible PTAB challenges, and that disqualifying them from micro and small entity status for IPR dismissals because of that funding “only encourages alleged infringers to file more IPR applications.”

Metz and the other inventors are suggesting the following specific changes be adopted:

  • A petition shall be denied upon request of the patent owner provided that the assignment recordation at the office demonstrates that one or more named inventors holds a controlling ownership in the patent.
  • A petition shall be denied upon the request of the patent [owner] who meets the net worth requirements of 12 CFR § 1071.103.
  • A petition shall be denied upon request of the patent owner who has commercialized the subject matter of at least one of the claims whether directly or through a licensee.

The ANPRM does include language about limiting the impact of AIA proceedings on “under-resourced patent owners that are commercializing their inventions.” However, the USPTO has repeatedly clarified that the ANPRM does not constitute proposed rules. Once comments have been received, the Office will evaluate them to come up with a Notice of Proposed Rulemaking (NPRM), which will represent its official proposals. A Final Rules package will not come until after the 60-day comment period for the NPRM. “There’s no timeline,” Vidal told IP reporters in April.  “We want to move as swiftly as possible while being thoughtful and deliberate.”

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12 comments so far.

  • [Avatar for Tesia]
    Tesia
    July 3, 2023 01:23 pm

    Molly, if your attorneys really cared, they’d take your PTAB case pro bono. Too bad you have to pay the attorneys their fees regardless of whether you win or lose so whether or not you win or lose doesn’t affect their money. Your hundreds of thousands went to attorneys and not the United States government.

    If you did everything right then sue the attorneys or agents who wrote, prosecuted, and examined your patent. Make it some sort of tort. Make patent attorneys somewhere hate the PTAB as much as you do due to some negligence you’ll find. Make it less of a payday for them all.
    You have to tie your pain to more people. Inventors are 1% of the population. No one cares enough to fight for free. Not everyone is Josh and going to pour their own time and money into something when they’re over their hurdles and making their money.

  • [Avatar for Tesia]
    Tesia
    July 3, 2023 12:09 pm

    Even Thomas Jefferson, founder of American patent law my Scotus… An attorney.

  • [Avatar for Tesia]
    Tesia
    July 3, 2023 11:21 am

    Molly, you have to become a huge influencer and then create something these days. This way you have millions of fans to boycott and cancel the infringers.
    Or, rely on trade secrets… Both positive and negative.

    I think the USPTO examiners are saving everyone from the battle between the haves and have-nots by throwing around obviousness rejections. The office action that made me give up my only published patent (thank goodness) was an obviousness objection where the specification of that prior art taught away from and limited the amount of metal. It wasn’t a final rejection. I just realized the futility.

    I was a child when AIA was passed. You unfortunately filed your patents under different laws which were changed over their 20 year term and made retroactive.

    You have to realize that every patent used as prior art against yours likely wouldn’t exist in these law conditions. And you have to accept that and be ok with that. It doesn’t make you any less of an Inventor because you see the change you initialized, the lives you touch.

    Nikola Tesla died poor and he has hundreds of patents. There are infinite ways to “fail” and only so few ways to “succeed.”

    The PTAB is just added to the infinite ways to fail.

    You’re not making all of the money on your invention because you made it a success for other people to want to take. Next time, you know you need other protections because the law is the way it is.

    Side Note:
    I used to work with US Inventor and everyone is amazing. Everyone is very passionate about saving patents but… What We the People need is for the patent attorneys to starve. That’s really what we need. What got us here is several gluttonous, greedy patent attorneys. They were making money and everything was going their way via the passage of AIA. They were “just doing their jobs” and extremely well for their employers. PTAB doesn’t cost 1 Million Dollars. USPTO does not charge that. Fighting in it does! Why? Patent attorneys.

    I’m not an attorney. Neither are you presumably. So we shouldn’t be thinking of ways to better things for us. We don’t make the system. We just feed it. So, stop. All of US Inventor is just noise, distraction unless patent attorneys realize where they’re headed. We need the patent attorneys to starve and then they’ll think of ways to better things for THEMSELVES. No USPTO jobs except for trademarks and copyrights. They can call themselves “trademark attorneys” instead.
    FAANG won’t be paying them huge rates in lush corporate decadence when there’s hardly any IP to destroy. So they won’t be able to pay their law school debt. And so on.
    People doom themselves pretty easily. Step out of their way. Pass along your ideas in your will to someone/anyone younger who you can trust and hope future generations will have the opportunity that we’ve been robbed of with AIA. Get around your own ego. This is not about you. You’re either a target or collateral damage.

    Today, in order to have a patent, it must be new, not obvious, etc… And worthless.

    In my journey, I made my own IP worthless because I filed it before I started manufacturing it. It was easy to give it up once I stepped back from the NEED to be fulfilled by having a patent and realized this patent is useless regardless. The process of making the closure cheap and tiny changed so much about the closure. No contract manufacturer that I went to could make it tiny and cheap. Large and cheap… Maybe.
    Right now, I’m taking a break and soon will be on my way to giving every company the ability to easily make their own zippers. Transforming the industry by not having to source from YKK, IDEAL, SBS. That’s at least what the fashion companies want… To own their zippers.
    I’m going to do away with zipper companies.
    Maybe…
    If I can get over the fact that the DoD needs zippers to protect from the chembio hazards that it produces – bombs beget bomb shelters kind of thing. Yuck.
    If I make one then everyone will have it… Even the selective “harmers” in war.

  • [Avatar for Silicon Valley Patent Nerd]
    Silicon Valley Patent Nerd
    June 29, 2023 07:20 pm

    I found portions of Molly Metz’s submitted comment persuasive. However, these proposals are at most tangential to any of the content of the ANPRM and would require a significant legislative overhaul of the AIA.

    I encourage everyone involved to consider the best use of resources for making the request and whether there is a more balanced approach to achieving these goals.

    It is improbable that entity size will ever be a consideration for discretionary denial. But independent inventors could make a stronger argument for receiving USPTO-appointed legal services to defend from challenges by serial IPR filers like Unified Patents.

  • [Avatar for Anon]
    Anon
    June 21, 2023 08:09 am

    Dickenson,

    I “get” that you would prefer to find some solace in word play between utility and design, but there is simply no traction there as those are terms of art and there is simply no tether to how you want to play with those words.

    I humbly suggest that you try another avenue.

  • [Avatar for Dickenson]
    Dickenson
    June 20, 2023 08:36 pm

    Anon,

    I agree with and understand the boring technical verbiage in your description. There seems to be an overwhelming amount of Law Verbiage that is too complex to interpret in simple terms, However most patent owners would have a hard time compiling the complexities in what constitutes a strong patent. Patent owners are taken back by the mere existence of an administrative branch that can literally “Cancel” the complexity of a Patent that shows the “furthering” of innovation or science which patents represent. Take the Jumprope patent or the Bedbug patents that were taken back by the PTAB, I don’t believe that these patentees have come to terms with what actually happened to their business or what constitutes a null and void of their personal property as you posted in the Supreme Court and Oil States case law. That being said I have studied this anomaly for years and cannot make verbal sense how the Utility of the Jumprope or Bedbug Trap can be cancelled but can be passed to the petitioner infringer without claiming that the product is a shift to a “Design” which has become a watered down “Utility” patent stripped of it’s “Utility” because that utility was the property of the patentee. By removing the “Utility” and its owner it has no choice but to become a “Design” of the new jumprope for the petitioner to take since the Utility was cancelled at the PTAB. If it still had “Utility” the patentee would own it again. I’m sure Molley Metz is going round and round in trying to justify what happened to her patent. Patentees also don’t realize that as of now improving an existing product is mostly “Anticipation” in the practice of patent law (work around patents). Before AIA this is how most patents were used and practiced. Patents have become political Chess Pawns.

  • [Avatar for Anon]
    Anon
    June 20, 2023 04:53 pm

    Dickenson,

    While I hear your angst that the same administrative agency that grants patents also takes them away, the rest of your polemic appears NOT to understand that the first part (prosecution/examination) does NOT involve the public, and the second expressly involves the public as the protaganist seeking to ‘cancel’ the granted patent.

    Your comment regarding utility patent transforming to design patent is untethered.

    That being said, I am with you in regards to the fact that the AIA was extremely poorly drafted and sold on the FALSE notion of improving patent quality.

    As I have used the analogy in the past, this bifurcated system has NO meaningful feedback loop back into the prosecution/examination process to which “improved quality” would even have a chance to find its way.

    Much as any real manufacturer of goods that runs a warranty department could tell you, warranty concerns have an immediate feedback loop back into design and production. No one runs a warranty department and keeps such information gained siloed away from the production process.

    Further still, as I have also mentioned, under the gloss of the “interpretation” ‘invented by the Supreme Court in the Oil States case, the personal property aspect of a granted patent has been transformed into a Public Franchise in order to allow the Administrative Agency a ‘clawback’ power. But this is done with ZERO regard to traditional notions of actual Franchise Law (by which we ALL should want the Patent Office (FranchiORs) – at a minimum – indemnify and protect THEIR decision to grant a patent in the first place and remunerate patent holders (FranchisEEs) for ANY expectation loss that the granted patent holder experiences.

  • [Avatar for Dickenson]
    Dickenson
    June 20, 2023 03:55 pm

    First off the PTAB should be more transparent in the patent filing process. Nowhere is this elephant in the room in the PTAB exposed in USPTO playbook. If the USPTO were to expose the process of potential invalidation at an 85% rate and chances of surviving a patent cancel I don’t believe any inventor in their right mind would advance to a state of following through the patent process. Needless to say most inventors want their patent to go through with allowance. Before the AIA was created an issued patent could be more easily challenged by the means of procedural representation of a trial jury. More sensibly an “Unbiased” process that is not representative of Big Tech. This AIA PTAB process forces new “Discovery” in a freshly allowed patent the ability to forcibly weave its way into the Prior Artwork and essentially “Body Double” or represent the “New Discovery” of the targeted patent into the New “Design” of the patent awarded to the infringer. Yes a watered down Utility Patent into a Design Patent Instituted by “Biasing” the new discovery. We all know that grabbing at straws to force a patent kill wouldn’t only surmise the shifting of claim wording to effectively blame examiners for doing a bad job to achieve this goal. So killing any new discoveries as in the Molley Mertz patent thwarts the objective reasons for the office actions that procure the “New Discovery” of a freshly allowed Patent in the first place. At minimum the USPTO should issue refunds for patents that the PTAB claims were badly written.

  • [Avatar for David Lewis]
    David Lewis
    June 19, 2023 03:15 pm

    It seems to me that anything that defangs IPRs is good. Any small inventor (like Molly Metz) that understands the IPR process and the effects of IPRs is unlikely to like IPRs and will be hesitant or dissuaded from investing in patents. If Molly knew what she does today, there is no way she would have filed for a patent on her invention.

  • [Avatar for Morgan Casteribe]
    Morgan Casteribe
    June 19, 2023 03:15 pm

    US Inventor spends a lot of time and effort chasing its own tail. The PTO can’t give you a pass. Congress makes the laws, as it recently reminded the Director. The idea was dead from the start, and you are advocating for her to go even further!?

    Get more legally astute leadership, and start being realistic for a change.

  • [Avatar for Anonymous]
    Anonymous
    June 19, 2023 12:23 pm

    The article is super biased and neglects to note that the vast, vast majority of comments from small commenters have been negative about the ANPRM and supportive of the IPR process (literally, thousands and thousands), and that US Inventor is using AI to generate their form letters

  • [Avatar for Anon]
    Anon
    June 19, 2023 08:53 am

    Sadly, I am compelled to once again warn the likes of Molly Metz that the types of ‘fixes’ that she seeks are not proper and would in fact tend to hurt small innovators that happen NOT to be of the type that commercialize their own innovations (which constitute a vast majority of the very class of innovators).

    To wit: the three prongs she advances EACH focus on ‘non-institution.’

    This is a dead-end path, as a major aim of the AIA was to make institution EASY (for example, by choosing to NOT have a standing requirement for the portion of the process conducted in the administrative agency domain).

    If the concern is loss of status merely to be able to protect against a post-grant proceeding, I can think of several BETTER answers:

    1) first and foremost, to put the words of the Supreme Court back to the shenanigan’s so employed. By this, I mean the move to turn an abject personal property into a type of personal property to which the Administrative Agency ‘maintains’ a claw-like ability to remove sticks from the bundle of property rights (the loss of the presence and level of the presumption of validity at the institution decision point, prior to any decision on any actual merits).

    This can be done merely by taking the duty of an franchisOR to a franchisEE (as part of the ‘deal’ of the patent grant being considered a “Public Franchise”) of the franchisor indemnifying the franchisee for the expectation cost of enforcing a granted patent (which would have the additional benefit of stopping the Office from generating fees from the conflicting aspect of granting and removing patent rights).

    2) by making an apparently substantive right to be a function of size, one LOCKS IN status to that size and makes it more difficult for those not wishing to commercialize themselves to obtain values in transactions. That is, the ‘lock-in’ necessarily penalizes those innovate to sell for the subset of small entities that innovate to produce themselves.

    THIS is exactly a ‘flavor’ that I have criticized in the past. It is a flavor of “divide and conquer” and impermissibly attributes a degree of substantive rights to a property right that has always been meant to be FULLY alienable. It is a ‘shiny object’ that HURTS the notion of alienability, and in the end HURTS the entire class of small innovators.

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