USPTO Comments: Proposed Modifications for IPR and PGR Proceedings before the Patent Trial and Appeal Board (PTAB)

By at 17 June, 2024, 2:06 pm

The Honorable Kathi Vidal

U.S. Patent and Trademark Office

600 Dulany Street

Arlington, VA 22314


Dear Director Vidal:

On behalf of the Small Business & Entrepreneurship Council (SBE Council), I am writing to provide comments in response to the U.S. Patent and Trademark Office’s April 19 Notice of Proposed Rulemaking (NPRM) concerning proposed modifications to the rules of practice for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB).[1] SBE Council appreciates the opportunity to address this important issue.

SBE Council is an education, advocacy, and research organization dedicated to protecting small businesses and promoting entrepreneurship. Our members include small business owners, entrepreneurs, state and local business groups, corporate partners, and associations. Intellectual property (IP) protection has been a core issue for SBE Council at home and abroad since our founding 30 years ago. Strong and predictable IP protections benefit startups, help businesses grow, and support the United States’ vibrant, innovative and competitive economy.

It is imperative for USPTO to consider the perspectives of inventors and advocates who recognize that the value of intellectual property protections rests on certainty, enforceability, and predictability. SBE Council has previously provided comments regarding the 2023 Advance Notice of Proposed Rulemaking (ANPRM) that preceded the April 2024 NPRM.

We firmly believe that any rules from USPTO should promote predictable results and foster efficient and fair proceedings for small inventors before PTAB. Small businesses are the engine of American innovation, producing 14 times more patents than large firms.[2] Unfortunately, in recent years, many large corporations have adopted targeted litigation strategies that exploit the PTAB system, forcing smaller competitors out of the market.

In the released NPRM, SBE Council welcomes the exclusion of the “compelling merits” standard as a broad means of evading discretionary denial.[3] Nevertheless, we are disappointed by the NPRM’s failure to include the “Fintiv” policy, which clarifies that the PTAB may deny a challenge if the petitioner is concurrently litigating the validity of the patent in federal court. The current USPTO “compelling merits” standard, in relation to Fintiv analysis, has made PTAB significantly more favorable for petitioners.[4]

In our comments on the ANPRM, we urged USPTO to close this loophole by protecting the original intent of the Fintiv factors to curtail predatory tactics used by larger companies against smaller competitors. Too often, corporate behemoths infringe on their smaller competitors’ patents. When those competitors sue in District Court on patent infringement claims, larger companies frequently challenge the very existence of these asserted patents at the PTAB. This forces small firms to fight a war on two fronts to defend their intellectual property.

Furthermore, the NPRM overlooks any limitations on petitions filed by non-market, non-competitive entities — an idea initially introduced in the ANPRM that warranted further exploration. It also does not include any limitations on challenges against patents owned by under-resourced entities striving to bring their products to market. Such reforms would safeguard small innovators and startups from the actions of larger, established infringers.

SBE Council urges USPTO to pursue policies that strike an appropriate balance between the interests of innovative startups and legacy organizations. As we emphasized in our previous comments to the Office, Congress created the PTAB with the intention of providing a faster, less expensive alternative to litigation.

The abuse of the system by larger companies has created an unfair advantage, forcing many startups to close their doors and leave the full potential of American innovation unrealized. Those seeking to invalidate a patent or accused of patent infringement should have the opportunity to make their case before the PTAB or in District Court – not on both fronts and via unscrupulous maneuvers that rely on loopholes in the current system.

Thank you for your time and attention to our concerns.


Karen Kerrigan, President & CEO






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