“In support of post grant proceedings that strengthen the U.S. patent system, defer to the work already performed by the USPTO in issuing a patent, and provide a balanced procedure to challenge patents, I recommend that Director Iancu consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination.”
Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. In principle, IPRs provide the public a process to file a petition to challenge a patent by presenting unknown prior art to the USPTO for consideration. Examples of this include a thesis paper located in an obscure library, a technical document not widely disseminated, a foreign patent, or even a U.S. patent that the examiner missed during examination. IPR is a valuable tool to address a subset of all patents.
Some petitioners, however, treat IPRs like they are watching a football game. Like an angry fan yelling at their television set, they simply argue that the examiner’s decision is “wrong.” Unfortunately, the results of an IPR are costlier than yelling at a television on a Sunday. During a review of an official’s decision, even the National Football League (NFL) recognizes the skill of their trained officials and provides deference to their decisions.
The Legislative Play Book
Congress specifically granted the USPTO Director similar authority under 35 U.S.C. § 325(d) to defer to examiners’ decisions and reject a petition because it relied on the same or substantially the same prior art or arguments previously presented to the Office. The phrase “presented to the office,” as used by Congress in the statute, is important. This language is broader than the “substantial new question” test of 35 U.S.C. § 303 requiring the USPTO to order a reexamination even if “a patent or printed publication was previously cited by or to the Office or considered by the Office.”
The Director’s guidance to the Patent Trial and Appeal Board (PTAB), however, does not stop at the statutory determination of whether the art was presented to the Office during examination but instead instructs the PTAB to conduct a detailed inquiry into whether the art was both presented to, and documented as being fully considered by, the examiner. The Director, for example, through Board decisions like IPR2017-00642, has identified several factors for the Board to consider in determining how to apply § 325(d). Those factors primarily focus on the extent to which the art was considered during examination, including whether the asserted art was a basis for a rejection. These factors fail to appreciate the skill of patent examiners and has fostered IPR behavior that is unhealthy to the U.S. patent system.
When in Doubt, Defer
Patent examiners are extensively trained and highly skilled in both searching prior art and applying that art during examination. One key aspect of efficient examining is to select the best representative art uncovered during the search and explain how it may influence pending claims. It should be presumed that any art presented during examination, whether cited by the examiner or applicant, has been fully considered by the examiner even if it has not been expounded upon in writing. Not applying a strong presumption that all art presented during examination has been fully considered places an undue burden on examiners to explain all their reasoning for each citation (requiring production time which they are not provided). In addition, inventors should be provided a reasonable expectation that a decision to grant a patent is at least presumed valid by the USPTO over the art of record.
Petitioners have exploited a lack of deference to examiners’ work product by using art that was before the Office to support challenges in IPRs. These petitions amount to nothing more than a second-guessing of the examiner’s undocumented reasoning. Based on the assumption that the examiner never considered all the references before them, it is far too easy to use previously cited references, find a couple of secondary references, and hire a technical expert to stitch together an invalidity argument.
A More Predictable Post Grant Process
I support post grant proceedings that strengthen the U.S. patent system, defer to the work already performed by the USPTO in issuing a patent, and provide a balanced procedure to challenge patents. In keeping with these aspirations, I recommend that Director Iancu consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition.
This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.
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