Comments on USPTO’s Newest Regulation Overall Oppose Discretionary Denial Rules

The USPTO is considering whether to enshrine discretionary denial of inter partes review cases into regulation.  Last week, comments were due on the most recent portion of this process.  (CCIA’s comments criticizing the current General Plastic, Valve, NHK Spring, and Fintiv precedential opinions, and explaining why they should not be converted into rules, can be found here.)  Over the course of a shortened 44-day rulemaking period, more than 800 comments were received.

An analysis of the comments shows that, when it comes to comments with substantive argument and evidence, the weight of comments is against any proposed rule that would codify discretionary denial into regulation or strengthen the existing precedents.  In fact, the weight of substantive commentary is strongly against discretionary denial.

Analyzing the Comments Overall

While the notice and comment procedure is not a voting process, and “[a] single, well-supported comment may carry more weight than a thousand form letters,” the balance of comments is still sometimes referred to by agencies in the rulemaking process.  Classing comments broadly into “support discretionary denial rules”, “oppose discretionary denial rules”, and “other,” the overall number of comments is divided.  Around 350 support some form of discretionary denial rule, around 310 oppose discretionary denial rules, and around 160 fall into the “other” category.  (“Other” comments include comments that take no clear position on whether to implement discretionary denial rules, as well as comments that take positions on issues unrelated to discretionary denial.)  Even looking at all comments, there’s no clear majority position being taken by stakeholders. 

But that split is misleading.  A large number of comments received, especially on the “support” side, were identical form letter comments.  Around 70% of comments supporting the rule were non-substantive “form” comments generated from a single form letter campaign.  And agencies are not required to respond to—or even give serious consideration to—non-substantive comments.

Analyzing the Substantive Comments

When excluding the large number of non-substantive form comments that provide little to no rationale or evidence for their position, we’re left with the substantive comments that the USPTO is required to consider and address in creating a rule.  And the numbers there show strong opposition to the rule.

Looking only at substantive comments, 27 support discretionary denial rules, 38 oppose, and 4 provide a mixed view.  And looking at the depth of commentary provided in these comments, the comments opposing a rule are significantly more detailed than the comments supporting it, providing extensive evidence regarding the problems a rule would create.  In contrast, supporting comments are sparse in argument and detail.

In other words, a clear majority of the substantive commentary on the proposed rules is opposed to the notion of codification of General Plastic, Valve, NHK Spring, and Fintiv.

Towards a Proposed Rule

Presumably, the USPTO is conducting this abbreviated request for comments with an eye towards rulemaking before the new Administration takes office.  But given that the weight of substantive feedback on the request for comments is against any such rule, it would be inappropriate for the Director to put forth any such rule, much less put forward such a rule with only weeks before the new Administration takes over.  The USPTO under Director Iancu has failed to abide by APA rulemaking requirements in the past—ignoring the weight and substance of commentary against a proposed rule would just be one more example.

The public has sent a clear message that discretionary denial rules are unwanted and harmful to the patent system.  The only remaining question is whether Director Iancu is listening.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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