Why I Petitioned the USPTO: Timing, Retroactivity, and the Fight for Inventor Rights

Timing is everything in the world of American innovation. On September 16, 2025, I hand delivered a petition for rulemaking to the U.S. Patent and Trademark Office (USPTO) seeking a simple, long-overdue fix: clarify by rule that “cancellation” of a patent claim means the end of rights prospectively, not erasure of decades of hard-earned reliance, contracts, and value. After living this process, I know firsthand how timing and retroactivity can destroy the lives and businesses of those who play by the rules.

I’ve been thinking about this petition since 2022, ever since I realized how my personal journey, growing my business, licensing my inventions, winning International Trade Commission (ITC) and district court settlements – clashed with the outcome when a giant company finally decided to fight rather than settle. As I wrote in my petition:

“I am directing this petition to you because, under 35 U.S.C. §§ 2(b)(2), 318(b), 328(b), 316(b), 326(b), and 307(b), you alone have the authority and responsibility to interpret ambiguous statutory language in USPTO regulations, and to ensure the Office’s practices align with the Constitution, the [Administrative Procedure Act] APA, and the [America Invents Act] AIA.”

Why were past licensing deals, ten years of maintenance fees, and public records all respected until one infringer waited out the clock? They faced repeated notices of infringement (2012–14) but brought their Patent Trial and Appeal Board (PTAB) petition only when I finally sued them in 2018. As I noted in the petition:

“My rights were treated as if they had never existed, erasing both prospective and past rights that had been relied upon by me, my licensees, and the marketplace, under a retroactive interpretation of ‘cancel.’”

But this is more than a personal issue, it’s a constitutional one. As my petition explains:

“Retroactive cancellation of an issued patent raises deep constitutional concerns. The Patent Clause of the U.S. Constitution (Art. I, § 8, cl. 8) promises inventors the ‘exclusive Right’ to their discoveries for ‘limited Times.’ Erasing rights ab initio after years of lawful reliance conflicts with that guarantee and undermines the settled expectations essential to a functioning property system.”

United States Supreme Court precedents underscore these foundational concerns:

• “Protecting reliance interests created by government action,” as recognized in United States v. Winstar Corp., 518 U.S. 839, 884 (1996)
• Upholding the “separation-of-powers bar on retroactive nullification of final rights,” as described in Plaut v. Spendthrift Farm, Inc., 514 U.S. 211, 225 (1995)

From a policy perspective, my petition further sets out:

“Retroactive cancellation erodes due process, destabilizes contracts, unsettles licensing markets, and damages public trust in the government’s own grants of property rights; this harm is magnified by the lower ‘preponderance of the evidence’ standard used by the PTAB.”

This is not just my fight. Recent USPTO guidance and Director-made principles like the “settled expectations” doctrine show the Office acknowledges that inventors depend on predictable rights as they build businesses and careers. My petition asserts:

“This petition lays out the legal, economic, and systemic support for clarifying via formal APA rulemaking that claim cancellation under §318(b), §328(b), or §307(b) will protect all accrued rights, contracts, and business value up to the date of cancellation. … Doing so requires no act of Congress, only the USPTO exercising its power, as so many have urged, to uphold settled expectations and fundamental fairness.”

I’m far from the only voice demanding reform. Even proponents of the PTAB have recently warned of the costs and dangers of retroactive law. For instance, former USPTO Acting Director and Acting Solicitor Joe Matal recently filed an amicus brief in SAP v. USPTO citing Landgraf v. USI Film Products, which said:

“The presumption against retroactive legislation is deeply rooted in our jurisprudence and embodies a legal doctrine centuries older than our Republic.” (Landgraf v. USI Film Products, 511 U.S. 244, 265 (1994))

As Matal wrote in his amicus brief: “Retroactive application of PTAB cancellation upsets settled expectations and undermines the reliance interests at the heart of the patent system.”

This debate is no longer hypothetical. Retroactive cancellation means, as I wrote in my petition, that “every contract I had ever signed, every license issued, every innovation shared… was wiped away, not by agency regulation, but by judicial interpretation and agency silence.”

My proposal would close this gap and align the United States with Europe, Japan, and others where “cancellation” only cuts off rights from the date of the ruling forward, never backwards. The policy is simple, and the stakes could not be higher:

“Making cancellation prospective honors the work, sacrifices, and commerce built on a secure patent grant. It incentivizes challengers to act quickly, forcing infringers to review patents, seek reexamination, or challenge validity early, rather than lying in wait to invalidate only when finally sued.”

The APA gives every citizen the right to petition an agency for rulemaking. At the USPTO, though, it isn’t easy to see how those petitions play out. While some outcomes have been documented, the overall frequency and impact have never been systematically reported. What we do know is that when a petition is filed, the USPTO reviews it, issues a written response, and may consider it in shaping future rules. In other words, even if the process isn’t widely visible, petitions for rulemaking matter; they become part of the conversation that can influence reform.

You can read my full petition here.