What is the USPTO Doing Now? IPWatchdog Unleashed
This week our conversation is with Scott McKeown, a shareholder with Wolf Greenfield and the author of PatentsPostGrant.com, and Steve McBride, a partner with Carmichael IP. In this wide-ranging conversation, we cover what is happening at the United States Patent and Trademark Office (USPTO), specifically discussing the office’s proposed changes to terminal disclaimers for obviousness-type double patenting, the proposed Patent Trial and Appeal Board (PTAB) rules, director review as it pertains to inter partes review (IPR). We also discuss pending legislation on Capitol Hill, specifically discussing the Patent Eligibility Restoration Act (PERA) and The Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL), which deals with statutory reforms to PTAB.
Our conversation starts substantively with double patenting and terminal disclaimers.
“I’m not really sure where these rules came from, why they’re trying to do it,” said patent attorney, Gene Quinn, who is the President & CEO of IPWatchdog. “But they say right up front on about the third page of the Federal Register notice that the intention here is to make it cheaper and easier for challenging entities to invalidate patent claims.”
“The stated reason is because of bad actors,” McKeown explained as he explained what the USPTO is hearing from some stakeholder complaints about a lot of patent litigation, patent thickets and evergreening. “Maybe the real reason is the Biden administration trying to get to drug pricing and what they believe are evergreening of certain pharmaceutical industries… [T]hey can’t touch that because that’s going to explode in their face, which happen anyway with this rule package. But I think the cover, so to speak, the political cover is, we’re giving the public something what they want.”
“So much of what the Biden Administration is doing any more relates at least in our space to drug pricing,” Quinn explained. “None of this is going to change drug prices. It just seems to me to be a little bit nonsensical.”
“That very well may be the purpose behind it,” McBride said. “But going at it through the judicially created doctrine of obvious this type double patenting is such a strange way to get at this issue, because it seems like this is a doctrine that really needs less emphasis going forward rather than creating traps for patent applicants… If this goes forward, the idea of agreeing to a terminal disclaimer if just out the door.”
On the issue of the proposed PTAB rules, the discussion pivots to the criticism surrounding the proposal to separate briefing on discretionary denial instead of requiring petitioners to address the issue in the original IPR petition.
“The part that is giving a lot of people heartache is the discretionary denial briefing,” McBride explained. The concern is “the timing and the contents of the briefing that the patent owner has to put out, moving it out of the preliminary response where the patent owner has 70 or 80 pages to talk about it” and giving the patent owner only 10 pages “when you may have two or three discretionary denial issues you want to bring up in your briefing.”
“As someone who files a lot of petitions, is it helpful? Yeah, it’s helpful to me,” McKeown admitted. “Would I die without it? No. You know, it’s not that big a deal to me when I’m filing a petition. So, you know, you’re providing a little bit of value to petitioners, but it’s costing patent owners a lot more.”
“If this was just the right to a petitioner file a reply to the to the discretionary denial issues, that probably wouldn’t be that controversial,” McBride explained. “But the messing up what’s going on with the preliminary response and doing it in a manner that makes it more difficult for patent owners to respond, I think is what’s really driving the backlash.”
To hear more, please download the podcast.
Gene Quinn
Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people […see more]
