Inventors Torch Patents Outside PTO, Decry Review Process

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By Malathi Nayak

About a dozen inventors in town for a conference set their patents aflame in front of the U.S. Patent and Trademark Office headquarters Aug. 11 to protest what they called an unfair administrative system for invalidating patents.

“Patents are junk in the U.S. and that’s why I’m burning my patents,” Paul Morinville, an inventor of software applications and founder of US Inventor, an advocacy group for independent inventors’ intellectual property rights, said as he set his patent ablaze with a cigarette lighter.

The PTO is “issuing patents on one side of the office and the other side is changing their mind,” Josh Malone, who invented Bunch O Balloons, a product that fills numerous water balloons at once, told Bloomberg BNA before the protest. “They should get it right, stick with their decision and let the courts sort it out.”

One of Malone’s patents was invalidated in January at the PTO’s Patent Trial and Appeal Board, and another is under review. The PTAB should only take up petitions that challenge “egregious” patents, Malone said, but it institutes examinations in 70 percent of patent-challenge petitions.

The protests occurred on the sidelines of the 2017 Inventor-Con, a conference organized by the PTO to educate inventors and small business owners on patent and trademark rights.

PTO Process Under Fire

Inventors who object to the PTO’s authority to invalidate patents after they’ve been awarded say the system weakens U.S. intellectual property rights.

The passage of the America Invents Act of 2011, a sweeping overhaul of U.S. patent law, led to the creation of administrative patent reviews as an alternative to the more costly path of challenging patents in federal district court. But patent holders say those proceedings, where anyone can claim a patent is invalid because it’s obvious or not novel, make it too easy for those accused of infringement to get patents invalidated.

Moreover, they say, the patent system now favors alleged infringers, as recent U.S. Supreme Court decisions, changes in the law, and the PTAB have led to the cancellation of numerous issued patents.

“The PTO welcomes the perspectives of small inventors—they are an important part of the patent system and their views need to be heard,” the agency said in a statement.

Federal lawmakers are debating the need for new patent law but have not enacted any legislation in this Congress.

The U.S. Supreme Court has agreed to review the constitutionality of the agency’s patent validity review proceedings in its upcoming term in Oil States Energy Services LLC v. Greene’s Energy Group LLC .

PTO Leadership Gap?

President Donald Trump hasn’t nominated a replacement for former PTO Director Michelle K. Lee, who resigned in June.

Lee was popular among technology companies. However, patent owner and inventor groups criticized her for not reining in a PTAB they consider overly aggressive in invalidating patents.

Joseph Matal, a former congressional aide who played a leading role in drafting the AIA, was appointed June 7 as PTO acting director.

“The first step would be to get a director who wants to act in harmony with the courts,” Thomas Woolston, the founder of patent-holding company MercExchange, told Bloomberg BNA. The PTAB is invalidating patents even after they have been adjudicated by courts, he said.Legislation that would limit patent validity challenges at the PTO and strengthen patent owner rights in court was introduced in the Senate June 21 by Sen. Christopher Coons (D-Del.).

The Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Act would make it easier for patent holders, including individual inventors and universities, to enforce their patents and amend patent claims during a challenge. It would limit repetitive attacks against patents.

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

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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