CIFE encourages the USPTO to end the strategic abuse of the PTAB

The Center for Innovation and Free Enterprise (CIFE) would like to respond to the Request for Comments Regarding the Notice of Proposed Rulemaking (NPRM) on “Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement.”

The NPRM does not address a number of topics that were in the Advance Notice of Proposed Rulemaking (ANPRM) including: placing limitation on petitions filed by for-profit entities that are nonmarket competitors, allowing discretionary denial of a petition on claims previously subject to a final adjudication, placing limitations against challenging patents owned by under-resourced owners where the patentee has or is attempting to bring products to market, requiring a petitioner to stipulate that it has not filed a prior post-grant proceeding on challenged claims, establishing regulations allowing discretionary denial for parallel litigation, and creating threshold definitions that apply to petitions subject to discretionary denials.

CIFE encourages the USPTO to end the strategic abuse of the PTAB, adopt rules that impose basic due process requirements on petitioners, as well as other procedural guardrails that reflect the norms of the rule of law, adopt basic due process requirements that are applied to patent owners in adversarial proceedings in other agencies, and recommend that Congress enact reform legislation. Further, USPTO has the legal authority to adopt the Fintiv factors and end serial petitions. The USPTO should not adopt rules that continue to exacerbate the abuses of the PTAB.