PTAB Bar Association submits comments in response to Notice of Proposed Rulemaking
The PTAB Bar Association has submitted comments in response to the U.S. Patent and Trademark Office's Notice of Proposed Rulemaking on “Revision to Rules of Practice Before the Patent Trial and Appeal Board.” A copy of the comments is available at this link.
The PTAB Bar Association’s position is that the notice of proposed rulemaking (NPRM) is beyond the U.S. Patent Office’s statutory authority and contrary to the America Invents Act (AIA), its legislative history, and its intent. The proposed rules implicate the Supreme Court’s major questions doctrine, which requires federal agencies to point to “clear congressional authorization” when effecting transformative changes in regulatory policy, or policy changes of vast economic and political significance. The proposed rules would fundamentally alter the availability and scope of inter partes review (IPR) proceedings, and would impose new estoppels and bars that exceed those found in the AIA and even those that Congress is considering enacting in the PREVAIL Act.
For reasons explained in the letter, a substantial majority of the Association’s members, including members who represent both patent owners and petitioners, have numerous concerns with this NPRM, and cannot support the proposed rule. It will likely significantly restrict access to AIA proceedings, particularly IPRs, for companies with legitimate business concerns who seek to clear the way for future investment or who seek lower-cost alternatives to litigation. Restricting access to IPRs, which were intended for that very purpose, will increase the economic barrier to market entry, deter investment in new products, or make products unnecessarily costly for consumers. A small minority, while agreeing with many of the majority concerns with the proposed rules, believe that the NPRM is within the agency’s discretion to implement the AIA.
