Iancu Will Propose Changes to Patent Challenge System (1)(1)

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By Malathi Nayak

The Patent and Trademark Office will propose changes to its administrative patent challenge processes in the next several months, agency director Andrei Iancu said at a Senate Judiciary Committee oversight hearing.

The office is reviewing its patent challenge program procedures amid a debate among lawmakers, patent owners, and practitioners about whether they are unfair to U.S. patent holders.

“We are reviewing this program carefully to make sure that the agency’s approach to these critical proceedings is consistent with the intent of the AIA and the overall goal of ensuring predictable, high-quality patents,” Iancu told lawmakers, referring to the 2011 patent overhaul law known as the America Invents Act.

The PTO is examining its decision processes related to petitions to review patents; amending claims in patent challenges; and assigning review panels, among other procedures, Iancu said. He told lawmakers he expects to announce proposed changes to the patent challenge program in the coming months, without specifying an exact time frame.

Congress created certain administrative patent validity reviews—such as inter partes review—under the AIA as alternatives to more costly court litigation. The review system is popular among tech companies that patent owners often sue for infringement. But some U.S. patent holders, including pharmaceutical companies, argue that the administrative challenge mechanisms have made it too easy for alleged infringers to kill patents.

The Supreme Court is likely to issue a ruling in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, in which it is weighing the constitutionality of inter partes reviews, by the end of June.

Fears of Overreach

Senate Judiciary Chairman Charles Grassley (R-Iowa) warned Iancu to stay within the limits of his authority and the AIA while proposing amendments to the agency’s rules on patent challenge reviews.

“I raise this issue because there is concern from certain stakeholders that you might cut the process that has been set in the statute,” Grassley said.

The PTO would ensure the program does not go against the AIA, Iancu said in response.

“We want to make sure it is a balanced system,” Iancu said. “It not good for anybody if we are too far on one side, and we invalidate patents that should not be invalidated, and it is not good to be on the other side where we let patents through that should not be let through.”

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

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