USPTO needs to address problem of abusive serial challenges using re-examinations

USPTO needs to address problem of abusive serial challenges using re-examinations

USPTO Director Squires reportedly warned that “even extremely strong patents” cannot survive repeated rounds of review

The current U.S. Patent and Trademark Office (USPTO) leadership has made its position on serial patent challenges crystal clear. USPTO Director Squires reportedly warned that “even extremely strong patents” cannot survive repeated rounds of review. “Serial and parallel validity challenges remain a significant problem for the patent system,” Squires reportedly said. Director Squires expressed concern about the use of serial challenges as part of an “efficient infringement” strategy. “When a large company is free to copy a patented invention because it believes it can invalidate the patent through multiple validity challenges, the large company’s other advantages, such as superior brand recognition and manufacturing scale, will often give it an edge over smaller competitors,” Squires reportedly said. Along the same lines, Deputy Director Coke Morgan Stewart reportedly explained that “to have a stable economy, we need a stable patent system [and] [r]epeated and expedited reconsideration of patent grants under the low preponderance of evidence standard is the antithesis of stability.”

Director Squires and Deputy Director Stewart are right on the mark as permitting excessive serial challenges to patents is unfair to patent owners and undermines the patent system. That is the case whether the serial challenges are a series of inter partes reviews (IPRs); series of ex parte re-examinations (EPRs), or a combination of IPR and EPR challenges. A new playbook has emerged with Director Squires reducing the number of IPRs instituted. If your petition for IPR is denied, just reformulate it into a request for EPR and refile it with the Office. In fact, you can literally cut and paste the art and the argument from the denied IPR petition into the request for EPR. In most cases, the Central Re-examination Unit (CRU) will grant the request for EPR and institute a new proceeding even though an IPR petition presenting the same or overlapping prior art was denied. If a denied IPR petition is just a rough draft for a re-examination request, the Director’s policies on serial challenges have a big loophole.

Going ahead, there is a need for stability, fairness and protection of strong patents from unfair serial challenges which the Director has spoken forcefully about. The outcome of unfair serial EPR/IPR challenges tell us whether those principles have teeth, whether they apply across the entire post-grant landscape or only in the IPR proceedings where the Director personally reviews institution decisions.