The United States Patent and Trademark Office (USPTO) is seeking comments regarding whether the United States government should develop a small claims mechanism for patent enforcement. The USPTO is interested in receiving comments from the public regarding whether there is both a need and a desire for this type of proceeding, in what circumstances such a small claims proceeding would be needed (if any), and what features any adopted small claims proceeding should include.
The Federal Register Notice explains that the USPTO’s interest in examining the possibility of adopting a patent small claims procedure relates to recent discussions the agency has had with Federal judges, private practitioners and various stakeholder groups and bar associations.
Frankly, I think it is about time the U.S. adopts a small claims proceeding so that patent owners have a meaningful mechanism to seek redress for smaller cases of infringement. Patent owners faced with one or more infringers in the marketplace can experience very real and damaging effects when the dollars involved are measured in the tens of thousands. But under the current patent infringement resolution mechanisms it frequently doesn’t make sense to pursue infringement from a financial standpoint even when infringement is measure in hundreds of thousands of dollars. Indeed, very real infringement can be devastating to small businesses and individual patent owners even though the amounts at stake do not justify the exorbitant costs associated with pursuing patent infringers in federal court.
Having said this and announcing my opinion in favor of such a procedure, the focus of this article is not to explain why this is needed or even address what such a procedure should include. Further articles will explore these and other topics. The remainder of this article will offer a summary of the Federal Register Notice.
The idea of a U.S. patent small claims court is not new. My al ma mater is cited by the USPTO as first having raised the question at a conference in 1989. The conference hosted by Franklin Pierce Law Center (now the University of New Hampshire School of Law) examined how to streamline patent litigation through a small claims court. After that conference, the American Intellectual Property Law Association (AIPLA) endorsed the creation of a ‘‘small’’ claims patent court. Indeed, the AIPLA passed a resolution to that affect. The Secretary of Commerce also formed an Advisory Commission on Patent Law Reform, which suggested further study of small claims procedures for patent cases in Federal courts. Unfortunately, the matter was not taken any further until 2012.
Fast forward to 2012. On Thursday, May 10, 2012, the USPTO co-sponsored a roundtable discussion (along with the Copyright Office) at The George Washington University Law School (GWU) to consider small claims proceedings for patent and copyright claims in the United States. Subsequently, on October 1, 2012, in continuation of the discussion initiated at the GWU in May 2012, the USPTO hosted a Patent Small Claims Proceeding Forum to discuss the possibility of making patent small claims proceedings a reality. Now, the USPTO is opening up the discussion to the public and seeking comments.
Specifically, the USPTO is interested in receiving comments directed to the core characteristics of what any adopted patent small claims proceeding. The USPTO is interested in comments on matters relating to appropriate subject matter jurisdiction, venue, case management, appellate review, and available remedies. Stating what should otherwise be obvious, the Federal Register Notice also explains that if a small claims proceeding is adopted it must conform to the requirements of the U.S. Constitution. The USPTO specifically cites the 7th Amendment as an illustrative example. Thus, to be seriously helpful any comments provided should be mindful of the fact that the Constitution does have provisions relative to trials that cannot be ignored.
The Federal Register Notice identifies the following “questions.”
The first question asks the public to provide a general description of the need (or lack thereof) for a patent small claims court or other streamlined proceedings. Those believing there to be a need for a patent small claims proceeding are asked to provide a description of which types of patent cases would benefit from such proceedings. Those who do not believe there is a need for a small claims patent proceeding are asked to explain why they believe such a procedure is unnecessary.
This question is for those who believe there is a need for a patent small claims proceeding, and asks for empirical data and analysis on the following issues. Of course, the USPTO says it is interested in receiving any information that might be useful even if it does not specifically address one of the following questions specifically.
1. Possible venues for a small claims proceeding, including whether patent small claims should be heard by Federal District Court judges or magistrates, whether patent small claims should be handled by an Article I court, such as the U.S. Court of Federal Claims, or whether patent small claims should be heard in another venue not specifically listed here.
2. The subject matter jurisdiction appropriate for a patent small claims proceeding, including which if any claims, counterclaims, and defenses should be permitted in a patent small claims proceeding.
3. Whether parties should agree to waive their right to a jury trial as a condition of participating in a small claims proceeding.
4. Whether there should be certain required pleadings or evidence to initiate a small claims proceeding.
5. What, if any, filing fee should be required to initiate a small claims proceeding.
6. Whether multiple parties should be able to file claims in a small claims proceeding and whether multiple defendants may be sued together.
7. What role attorneys should have in a small claims proceeding including whether corporations should be able to represent themselves.
8. What case management characteristics that would help to control the length and expense of a small claims proceeding.
9. What remedies should be available, including whether or not an injunction should be an available remedy and any minimum threshold or maximum cap on damages that should be imposed.
10. Whether a small claims proceeding should include attorney’s fees or some form of a ‘‘loser pays’’ system.
11. Whether a small claims proceeding should require mandatory mediation.
12. What type of record should be created during a small claims proceeding including whether hearings should be transcribed and whether a written decision should be issued.
13. What weight should be given to a decision rendered in a small claims proceeding in terms of precedent, res judicata, and estoppel.
14. How should a decision in a small claims proceeding be enforced.
15. What the nature of appellate review should be including whether there should be a direct appeal to the U.S. Court of Appeals for the Federal Circuit or whether there should be intermediate review by a U.S. district court or some other venue.
16. What, if any, constitutional issues would be raised by the creation of Federal small claims proceedings including separation of powers, the right to a jury trial, and/or due process.
17. Whether the patent small claim proceedings should be self-supporting financially, including whether the winning and/or losing parties should be required to defray any administrative costs, and if so, how would this be accomplished.
18. Whether and how to evaluate patent small claims proceedings, including whether it should be launched initially as a pilot program.
The USPTO also asks the public to share any concerns relative to any unintended negative consequences a patent small claims proceeding may lead to, along with any proposed safeguards that would reduce or eliminate the risk of any potential negative unintended consequences.
Sending in Comments and Further Information
Those wishing to provide comments for consideration are encouraged to do so by submitting written comments, which must be received on or before March 18, 2013. Comments should be sent to email@example.com. Comments submitted via e-mail should include in the subject line “Patent Small Claims.” Alternatively, comments may be submitted by postal mail addressed to: Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313–1450, ATTN: Elizabeth Shaw. Comments sent in via postal mail should likewise be identified as pertaining to “Patent Small Claims.”
Those with questions about this request for comments are invited to contact David Gerk in the Office of Policy and External Affairs by phone (571–272– 9300) or e-mail (David.Gerk@uspto.gov) or by postal mail addressed to: Mail Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450, ATTN: David Gerk.