American Innovators Express Support for Recent and Proposed Changes in Patent System

“The innovators said that any suggestion that the Director is not in the position to determine which forum is best suited to resolve issues is inconsistent with the congressional record and the recent Supreme Court decisions in Cuozzo v. Lee and Thryv v. Click-to-Call, both of which ‘affirm the Director’s broad discretion on instituting an IPR.’”

American flag lightbulb -, a group of 324 American innovators sent a letter to the bipartisan leadership of the Senate and House Judiciary Committees to express support for several improvements in the patent system implemented by U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, over the last several years. The letter also expressed support for recently proposed rulemaking concerning the USPTO’s discretion in instituting inter partes review Proceedings (IPR). The group of innovators included universities, nonprofit foundations, individual inventors, startups, small businesses, manufacturing, technology and life sciences companies.

Raising the Bar at the PTAB

The letter specifically expressed support for the changes Iancu has brought to the operations of the Patent Trial and Appeal Board (PTAB). For example, the recent changes that were implemented “to harmonize the standards used in PTAB trials with those used in patent infringement trials in federal district courts” made sense, said the innovators, because Congress intended PTAB trials to be a cost-effective alternative to district court litigation. One such change noted in the letter was the PTAB’s adoption of the standard of claim construction set forth in Phillips v. AWH Corp.  The USPTO published a final rule in the Federal Register changing the claim construction standard applied during IPR proceedings from the broadest reasonable interpretation standard to the Phillips standard, which is the same claim construction standard used to construe patent claims in patent infringement litigation in federal district courts and requires the PTAB to “interpret issued patent claims according to their ordinary meaning as understood by a person of ordinary skill in the field covered by the patent.”


Cementing Discretionary Denial Rules

The letter also expressed strong support for the Office’s proposed rulemaking concerning the factors PTAB panels can use to deny institution of a panel when there is parallel litigation in district court, noting that it appears to be clear that the USPTO director has the authority “to set regulations for the exercise of discretionary authority to deny institution in these instances.” The innovators opined that “[r]ecent letters to Congress opposing the USPTO rulemaking incorrectly suggest that it would upset congressional intent in passing the AIA by foreclosing an additional proceeding to challenge patents.” Noting that Congress clearly intended IPR to provide a cheaper and faster alternative, rather than an addition to, district court litigation, the letter expressed that it is logical to allow the Director the discretion to deny institution of an IPR “when a dispute can be more efficiently resolved by a district court, or an ongoing litigation is likely to resolve the dispute in a reasonable period of time.”

The innovators said that any suggestion that the Director is not in the position to determine which forum is best suited to resolve issues is inconsistent with the congressional record and the recent Supreme Court decisions in Cuozzo v. Lee and Thryv v. Click-to-Call, both of which “affirm the Director’s broad discretion on instituting an IPR.”

Diversity and COVID-19 Assistance

The letter concluded with support for Iancu’s “renewed commitment to much-needed administrative regularity at the USPTO” and his “commendable focus on ways to expand American innovation by tapping into the strength of our nation’s diversity and increasing the opportunities for all Americans to participate in innovation.”

In addition, the innovators praised Iancu for the steps taken to assist patent stakeholders during the COVID-19 crisis, such as deferred fee payments and the extension of certain statutory deadlines.


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Join the Discussion

4 comments so far.

  • [Avatar for George]
    October 28, 2020 11:16 pm

    @ Pro Se

    Probably right there! Not irreversible, but only if Congress acts quickly. Kind of similar to our decades of climate change denial. You can’t solve any problem by denying it exists!

    Also, the Chinese don’t have to wait for a ‘consensus’ that could take many years (or decades) – they can just change any policy on a dime, anytime they think it could be improved or made more efficient (and/or cheaper). They don’t really care about keeping lawyers and judges employed, like us! We just keep turning out more and more of them and less and less inventors (that feed them and put their kids through college)! That can’t keep up forever, can it? Especially since most inventors aren’t born rich, or at least don’t stay rich (thanks in part to our ‘inequitable’ patent laws, that seem to only protect the largest entities)!

  • [Avatar for Pro Say]
    Pro Say
    October 28, 2020 06:04 pm

    “Let’s hope the Chinese don’t realize that before we do!”

    Sadly, George, while this concern is well-placed, it is also years late.


    Fact is, since Bilski, Mayo, Alice, the PTAB, the off-the-eligibility-rails CAFC, and the big-promises-but-no-action Congress, the Chinese have been — and continue to — howl in delight (behind closed doors, of course) as American innovation sinks ever deeper . . .

  • [Avatar for George]
    October 28, 2020 12:36 pm

    @ Robert

    Thanks for clarifying. Just more of the same! Nothing to help the independent inventor, that’s for sure! They remain on the ROAD TO EXTINCTION thanks to Congress and our greedy PTO and legal community!

    Do artists have to pay legal fees to protect their works (each time they want to create a new one)? Would we even have artists or musicians today if they had to pay $20K-$30K every time they wanted to make (and have protected) a new painting or write a new piece of music? No, they have FREE copyright protection for that!

    More Law + Legal Wrangling = Less Inventors!

    Everyone should remember this new IP ‘equation’ (that’s easily provable without even being a mathematician). A little like E = mc^2. Remember that one? Or, like this one: $1 << $25,000

    The question then becomes does America want MORE inventors (and the jobs and prosperity they often create) or LESS of them?! The big corporations want less of them (of course) – 'ergo' the AIA! But, what does the U.S. economy need and want? What would be better for the U.S. economy? More lawyers, or more inventors? That should be an easy one! Let's hope the Chinese don't realize that before we do!

  • [Avatar for Robert Greenspoon]
    Robert Greenspoon
    October 27, 2020 12:40 pm

    It’s an important difference, but there is no pending “proposed rulemaking.” The agency instead issued a nonbonding, completely advisory “Request for Comment.” Historically, responses to such requests have not led to any agency action. Instead, what could have become notice-and-comment rulemaking got withdrawn the same day as the Request for Comment, after the Director attempted to get OIRA approval. See