vidal_kathi_sv_color_cropped-2-
2 February 2023PatentsSarah Speight

Former USPTO directors challenge Vidal’s patent outreach

Bipartisan coalition expresses concerns over direction of Kathi Vidal’s request for comments on patent initiatives | The “pro-innovation” stakeholders argue the US patent system doesn’t need to be fixed and doing so would “impact all industries and the economy”.

Former directors of the US Patent and Trademark Office (USPTO) have spoken out against director Kathi Vidal’s request for comments (RFC) on initiatives surrounding patent rights.

In a letter submitted to Vidal on Tuesday, January 31, the Council for Innovation Promotion (C4IP)—a bipartisan coalition of “pro-innovation stakeholders”—expressed concerns with the direction of the USPTO’s questions in the RFC.

The coalition includes board members Andrei Iancu, a partner at Irell & Manella in Los Angeles; and David Kappos, a partner at Cravath, Swaine, & Moore—both of whom are former undersecretaries of commerce for intellectual property and directors of the USPTO.

The USPTO issued a Request for Comments (RFC) on Initiatives to Ensure the Robustness and Reliability of Patent Rights on October 4, 2022, with the deadline for written comments being tomorrow, January 3.

The USPTO stated that it was seeking feedback on its proposed initiatives on “bolstering the robustness and reliability of patents to incentivise and protect new and non-obvious inventions”.

The office said it intended to address a variety of topics via the RFC, including prior art searching, support for claimed subject matter, request for continued examination (RCE) practice, and restriction practice.

Overhaul of patent system ‘not needed’

While C4IP conceded that it is “appropriate for the agency to lead public discussions and engage in a productive dialogue on improvements to the system”, it argued that the current RFC “directs the public to question fundamental functions of the patent system”.

It also suggested that attempting to change the patent system “to address perceived issues in just one industry, the USPTO would impact all industries and the American economy at large”.

In its letter, C4IP—signed by executive director Frank Cullen, a former vice president of US Policy at the US Chamber of Commerce—wrote that it is “concerned with the direction of the questions posted by the RFC, as they imply that our patent system needs an extensive overhaul. It does not”.

“By their very nature, patents are forward-looking instruments in that they last a number of years,” said the letter. “That is why the patent system is so dependent on stability and predictability.”

The coalition went on to say that patent policy and administration “should be approached with a steady hand, and changes need to be measured and thoroughly vetted both for their need as well as for their consequences”.

It warned: “Many in the public may read this RFC as signalling that the entire system could soon change in unpredictable ways negatively affecting both the value of patent rights as well as the interest of new entrants to seek and rely on patent rights.”

Further proposals

In addition to seeking feedback on proposed patent initiatives, the USPTO’s RFC aimed to address related initiatives that it proposed to the US Food and Drug Administration (FDA) last July.

Its proposals included introducing more examining time into the patent examination system; giving patent examiners more training and resources; and enhancing communication between patent examiners and the Patent Trial and Appeal Board (PTAB).

Moreover, comments were sought on questions posed to the USPTO by six US senators last June, raising concerns about “large numbers of patents that cover a single product or minor variations on a single product, commonly known as patent thickets”.

In their letter, the senators argued that the practice of obtaining large numbers of patents on a single drug product “impedes generic drugs’ production, hurts competition, and can even extend exclusivity beyond the congressionally mandated patent term”. As such, they requested that the USPTO considers changes to its regulations and practices.

The USPTO also said in its notice that it was studying additional topics and initiatives “to bolster the robustness and reliability of US patents and will seek public comments on those separately”.

Coalition aims

C4IP’s goals include “elevating the importance of strong domestic and international IP rights through a range of advocacy programmes, initiatives, and campaigns; supporting government leaders who understand that IP is inextricably connected to innovation, and advance policies that support a strong IP system; and providing an authoritative bipartisan resource hub for policymakers, the media, and the general public on IP-related policies and issues”.

Among the coalition’s board members are former federal circuit judges Paul Michel, who was interviewed by  WIPR last June; and Kathleen O’Malley.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Today’s top stories

Artistic licence: can copyright rein in generative AI?

Accent bias remains a problem in law

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
3 March 2023   The US Patents and Trademark Office director’s latest key decision has seemingly reinforced the viability of the controversial rule, as Muireann Bolger finds.
Patents
10 January 2023   Kathi Vidal’s precedential review of a PTAB decision overturned 'abandonment' ruling | Onus is on petitioner to provide evidence that claims are unpatentable, says senior patent attorney.
Patents
27 February 2023   Decision outlines how multiple dependent claims should be treated | Case related to patented baby sleepwear | USPTO chief grants rehearing.