US Patent reforms: It takes two
It has been nearly 11 years since the America Invents Act (AIA), the last significant change to patent laws in the US, was enacted. Under the AIA there have been nearly 10,000 post-grant proceedings filed.
About two-thirds of the petitions filed lead to institution; about 20% of proceedings settle prior to institution, with another 25% settling post-institution. For example, in 2018, 1,436 petitions were filed, but only 577 proceedings were instituted, of which 201 proceedings settled post-institution. Thus, in fact, only about 26% of the petitions filed actually went to trial.
However, US Patent and Trademark Office (USPTO) statistics show that for those patents that go to trial, one or more claims are found invalid for about 80% of the patents.
During this same time the US courts significantly reduced the scope of patent-eligible inventions as defined under 35 USC §101, through several noteworthy cases heard by the US Supreme Court: Mayo v Prometheus; Association for Molecular Pathology v Myriad Genetics; and Alice v CLS Bank. The court decisions regarding 35 USC §101 have had a significant impact on computer and biotech industries, significantly limiting the scope of patent protection available in these technologies.
Now, US Congress is proposing patent law reforms on two fronts: 1) by further amending the provisions of the AIA dealing with post-grant proceedings;
and 2) by codifying changes to 35 USC §101 to reverse or lessen the impact of the recent spate of court decisions addressing patent eligibility under 35 USC §101.
Proposed changes to post-grant proceedings
The STRONGER Patents Act was introduced to the US Senate on July 10, 2019, with the purpose of weakening post-grant proceedings by limiting the availability, attractiveness and effectiveness of post-grant proceedings and ex parte re-examination. The STRONGER Patents Act is a new incarnation of an act introduced first in 2015 and then again in 2017.
In outlining the foundational Findings for the Act, the bill states: “Unintended consequences of the comprehensive 2011 reform of patent laws are continuing to become evident, including the strategic filing of post-grant review (PGR) proceedings to depress stock prices and extort settlements, the filing of repetitive petitions for inter partes reviews (IPRs) and PGRs that have the effect of harassing patent owners, and the unnecessary duplication of work by the district courts of the US and the Patent Trial and Appeal Board (PTAB).”
