Pushing Deckchairs Off the Titanic

After years of failed bills, broken compromises, and heated debates, the U.S. Congress finally passed—and the President signed—a set of sweeping patent law reforms in the America Invents Act (AIA). I recently covered some of those reforms that may affect entrepreneurs in a Tech Cocktail blog post.

But as soon as that blog post went live, I started hearing whispers about potential technical amendments to the AIA from several Congressional hounds. Technical amendments should be used to fix minor errors in the language of an Act. They are not intended to rebalance the substantive provisions of a law developed through compromise and after a long battle and discussion by various competing interests. I hear that several amendments that are being kicked around the halls of Congress would modify certain controversial substantive provisions of the law—and they are anything but technical fixes.

Here’s the rumor: some of the proposed amendments relate to the post-grant and inter-partes review processes at the U.S. Patent and Trademark Office (USPTO). The recently-inked AIA includes a new requirement that parties involved in these agency proceedings bring any claim they could possibly raise in that proceeding, or lose the opportunity to bring that claim to the USPTO’s attention in a later proceeding or raise it in a subsequent court or International Trade Commission action.

This “estoppel” provision was developed to address concerns that the USPTO proceedings would be abused by parties who might want to drag the conflict out over years or file multiple actions that cover the same core set of issues and patents. Now it looks like someone with a vested interest wants a “do-over” that only applies estoppel to the issues that are actually raised and addressed by the agency. That amendment would pull the teeth from this provision and fail to address the system abuse concern.

I don’t know anyone who fell in love with the entire AIA, but post reform tinkering is not the answer. Patent attorneys across the U.S. are re-learning patent law, now that the rules of the game have changed, and many individuals, companies, associations, and yes, special interests, participated in the official patent reform drafting and debate process. Let’s wear this suit for a while (and see how it fits) before we start tinkering again.