In recent weeks the USPTOUnited States Patent and Trademark Office. See also PTO. has continued to undermine its own review processes at the Patent Trial and Appeal Board (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.)––from voiding former Director Kathi Vidal’s guidance that limited the Fintiv framework to introducing a non-statutory, “bifurcated” process that will result in more discretionary denials of petitions, irrespective of their merit. While much of the attention has focused on the Acting Director inserting herself into the petition review process—and rightly so, as it is illegal, arbitrary, and counterproductive—it should not be lost that the reinstated Fintiv guidance is just as problematic.
Petitions for 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 will now be subject to many more discretionary denials, even in cases where they present “compelling evidence” of unpatentability. And requests for review once again being denied in light of parallel proceedings at the International Trade Commission (ITCInternational Trade Commission) will create more opportunities for patent owners to game the system and avoid stringent scrutiny. As the Acting Director is flexing her own discretion, the ITCInternational Trade Commission should do the same and prioritize patent validity assessments when its Section 337 investigations are used to justify 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. denials.
The USPTOUnited States Patent and Trademark Office. See also PTO. deferring to the ITCInternational Trade Commission on issues of patent validity is nonsensical. Deference to the courts, while inappropriate given the statutory scheme Congress created, at least defers to the Article III court system that ultimately reviews 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. decisions. But the ITCInternational Trade Commission is another executive branch agency, one with no ability to invalidate or bar enforcement of a patent outside of a single case. As the agency responsible for issuing patents, the USPTOUnited States Patent and Trademark Office. See also PTO. has the unique expertise to most reliably and effectively evaluate patent validity challenges. That’s exactly why 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. was created—to expedite the process for making validity determinations and do so more accurately and at a lower cost compared to other jurisdictions.
The ITC’s role, in the context of intellectual property disputes, meanwhile, is to determine if accusations of patent infringement constitute unfair trade practices. If the ITCInternational Trade Commission finds infringement of “a valid and enforceable United States patent” it is empowered to issue an exclusion orderAn order issued by the U.S. ITC as a result of a 337 action, excluding from entry into the United States goods found to infringe a U.S. patent., barring an infringing product’s entry into the United States.
As it stands, Section 337 investigations consider an array of factors, of which the underlying validity of an allegedly-infringed patent is just one. The structure of Section 337 investigations––including the more condensed timeline and greater number of issues to consider––means that validity assessments do not get the same attention and focus they receive in 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. trials. The ITC’s validity rulings are also not binding on other jurisdictions.
While it is far from ideal that the ITCInternational Trade Commission become a primary forum for assessing patent validity, the USPTOUnited States Patent and Trademark Office. See also PTO. has now abdicated much of its responsibility to do so. For as long as the USPTOUnited States Patent and Trademark Office. See also PTO. is adhering to the Fintiv factors and using ITCInternational Trade Commission investigations to justify discretionary denials, the ITCInternational Trade Commission must reprioritize validity analysis––providing additional trial time dedicated to invalidity and employing technically trained adjunct staff as it contemplates potential exclusion orders. The ITCInternational Trade Commission should also use its discretion to adopt the PTAB’s “preponderance of the evidence” standard instead of the ITC’s “clear and convincing” standard in deciding invalidity. This would give Section 337 investigation respondents a process closer to what they are being denied by the USPTOUnited States Patent and Trademark Office. See also PTO.. And while the ITCInternational Trade Commission has consistently refused to give its public interest factors proper weight, including applying the eBay standard that those factors embody, with the failure of USPTOUnited States Patent and Trademark Office. See also PTO. to abide by its own statutory responsibilities it is all the more important that the ITCInternational Trade Commission engage with its own and refuse to issue exclusion orders absent irreparable harm, lack of adequate legal remedies, a balancing of the equities, and an examination of the public interest.
This is because the ITCInternational Trade Commission has become increasingly popular among non-practicing entities (NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it.)—and it has become so precisely because its exclusion orderAn order issued by the U.S. ITC as a result of a 337 action, excluding from entry into the United States goods found to infringe a U.S. patent. remedy is so powerful, with NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. leveraging the threat of exclusion for financial gain. The USPTO’s recent changes will provide a larger incentive for NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. wielding questionable patents to allege infringement at the ITCInternational Trade Commission, both hoping for a lucrative settlement and now blocking their patents from getting thorough review at 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..
In order to protect the integrity of its own investigations, the ITCInternational Trade Commission has to double down on patent validity determinations until the USPTOUnited States Patent and Trademark Office. See also PTO. once again holds up its end of the bargain.
