Fees for patent review guts America Invents Act

Fee problem

• Second, patent challengers do for the Patent Office what is potentially the most expensive and time consuming aspect of determining validity: finding the most relevant prior art. The technical people in the industry affected by a patent often have some of the best information relevant to whether the patent should be invalidated or narrowed. And those with sufficient motivation frequently find prior art references that patent examiners did not find, such as obscure foreign patents, old catalogs and user manuals and physical samples of earlier devices.
• Third, in presenting this evidence, challengers will be able to explain its significance in ways that may be helpful to the patent judges. The patent judges should be able to quickly deny meritless petitions, and not all proceedings challenges will result in patents being held invalid. But a robust post-grant review system really serves two goals: preventing harm caused by bad patents but strengthening and affirming rightly issued patents and in some cases limiting the invalidity defenses that can be raised in subsequent district court litigation.

The AIA’s promise of faster, easier ways to challenge issued patents should have been particularly helpful to petitioners that are not competing with the patentee in the same market and may not have access to the district courts. These include public interest organizations like Public Patent Foundation and the Electronic Frontier Foundation, each of which learns from their members which patents are the most troublesome. Challengers could also include humanitarian organizations seeking to enhance the availability in the public domain of drugs or other treatments for diseases and other medical conditions.
 
Filing expense
In implementing the AIA, however, the Patent Office chose to pass on some of the cost of the new post grant procedures directly to the challengers in the form of sizeable filing fees. Unfortunately, these high filing fees will deter some challengers from taking full advantage of the AIA’s reforms, effectively depriving the Patent Office of valuable information.  

In comparison, in the European opposition system, one of the inspirations for the AIA’s new post-grant procedures, patent challengers pay only a nominal filing fee. The European system uses the application filing fees charged to all applicants for patents (which are higher than the corresponding fees in the United States) to subsidize the cost of conducting opposition procedures for the small percentage of issued patents that are opposed.

It makes perfect sense to divert some resources from pre-grant examination of applications that may never mature into patents that anyone other than the owner cares about, and use these resources to scrutinize issued patents that have been identified as potentially troublesome. By instead charging challengers high filing fees, the Patent Office missed the opportunity to maximize public participation and realize the full potential of the reforms enacted in the AIA.

(Elizabeth H. Rader represents clients in patent infringement matters at the trial and appellate levels. She works in the Silicon Valley office of Alston & Bird LLP. )