Our Patent System Needs More Than An IPR Fix

Under Secretary of Commerce, Michelle Lee has begun an initiative to further shape and improve PTAB  Her Senior Advisor at the PTO will be “coordinating this effort.  Because her tenure is ending soon her post grant “effort’s” timing has caused some to wonder whether she plans to fix AIA’s second windows or to preserve them. Whatever her unspoken motives, if any, an official in-depth review of PTAB’s past performance is warranted. But is the PTO looking in the right places?

IPR’s late-stage destruction to the developed fruits of early-stage investment in patented property has inflicted more harm than will be uncovered by reviewing its records and conferring with IPR “users.” The examination of “five years of PTAB records and user experience will not reveal the indirect damage caused by IPR’s threatened use in licensing negotiations, its impact on declining patent values, its routine weaponization by the infringement defense bar and its unexpected heavy utilization. It would be more interesting to know how many PTAB claim nullifications have resulted from recent post-grant changes in patents’ legal landscape. Tossing patents out of PTAB’s second window after the expansion of development capital has destabilized our nation’s entire innovation ecosystem. Is it not far more efficient for the PTO examiners to “get it right the first time”? Maybe PTAB’s financial drain on PTO resources could be better directed towards improving PTO’s performance at its front door rather than its PTAB back door ten years later. If PTAB’s invalidation track record has resulted from a process that is “as effective and fair as possible” wouldn’t Congress conclude that the examination process must be flawed?
If, as some have said, PTAB is where patents “go to die” then it represents the nullification of patents’ statutory presumption of validity. If PTAB was established to clean-up the so-called “bad patents” infecting our patent system the efficient infringement lobby was so worried about before AIA enactment, perhaps PTAB’s patent system repair assignment is completed. Our patent system incentivizes innovation in substantial part by protecting investment in developing patented subject matter. The records PTO will examine will not reveal PTAB’s baleful influence on both investments as well as the successful operation of our innovation ecosystem. IPR “users” would not be using it if they did not like it. And although every PTAB ruling will result in a winner and a loser more than half of PTAB users are pleased with IPR because of all the damage that will be not accessed by this new examination.  For some unsuccessful IPR petitioners losing matters less than buying more time to infringe. Job one for Ms. Lee’s successor will be returning reliable “validity” to patents’ fading statutory presumption of validity. There is no announced time deadline for Ms. Lee’s tenure and none indicated in the PTO’s announcement of its PTAB review.  But if PTO cannot identify the conclusive way to repair PTAB’s indirect damage to our innovation ecosystem, the early stage innovation investment headed now to China and the EU will be gone forever.

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