In 2022, USPTOUnited States Patent and Trademark Office. See also PTO. Director Kathi Vidal released a guidance memo titled “Interim Procedure for Discretionary Denials in AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. Post-Grant Proceedings with Parallel District Court Litigation.” The memo made adjustments to the NHK–Fintiv rule, outlining three scenarios in which the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. would not issue discretionary denials. Most importantly, it made clear that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. would not deny institution of a post-grant proceeding if a petition presents “compelling evidence” of unpatentability. While the memo didn’t roll back Fintiv entirely, it did help to limit the worst of the damage—it ensured that the most obviously invalid patents were not denied review due to discretionary factors. This was a welcome step for the many businesses targeted with meritless patent infringement lawsuits and for all those who believe that high and consistent patent quality standards are essential for a thriving innovation economy.
Late last month, USPTOUnited States Patent and Trademark Office. See also PTO. Acting Director Coke Morgan Stewart—who has never been nominated or gone through Senate confirmation—rolled back this progress by rescinding former Director Vidal’s memo and reinstating the Fintiv rule in full.
Acting Director Stewart’s decision to reinstate Fintiv ignores clear concerns expressed by the intellectual property community. When the USPTOUnited States Patent and Trademark Office. See also PTO. proposed formalizing Fintiv in 2022, the response to the Advanced Notice of Proposed Rulemaking (ANPRM) was overwhelmingly negative, with more than 95% of public comments opposing the proposals.
To make matters worse, Fintiv was a complete rejection of the principles of the bipartisan America Invents Act, which passed the U.S. House and Senate by huge margins after years of negotiation, debate, and compromise. The NHK-Fintiv rule never went through a formal rulemaking process (the response to the ANPRM may indicate why) and represents a clear attempt by unelected officials to rewrite Congress’s laws.
It should also be noted that Fintiv has been shown to deter economic growth. A study by the Perryman Group – an economic and financial analysis firm based in Waco, Texas – found that Fintiv and related restrictions increase costs and decrease U.S. business activity, especially in the manufacturing sector. No wonder so many have expressed displeasure with the rule and the way it was implemented.
By discretionarily denying PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review in light of parallel district court litigation, Fintiv leads to more invalid patents going unreviewed and more waste and abuse of the patent system. Perhaps John Squires, recently nominated to serve as USPTOUnited States Patent and Trademark Office. See also PTO. Director, will choose to revisit Acting Director Stewart’s decision and repeal Fintiv entirely. If not, Fintiv will continue to come at a cost––for American businesses, consumers, and innovators.
