In September, President Biden formally nominated Richard Revesz, former Dean of the New York University School of Law, to be Administrator of the Office of Information and Regulatory Affairs (OIRA). This small but deeply powerful division within the White House Office of Management and Budget (OMB) – which is charged with the authority to review proposed regulations from federal agencies – has typically shied away from rulemaking proposed in the U.S. Patent and Trademark Office (USPTOUnited States Patent and Trademark Office. See also PTO.).
As I’ve previously written, the USPTOUnited States Patent and Trademark Office. See also PTO. has often evaded OIRA scrutiny by presenting actual federal rulemaking instead as guidance, policy documents, or administrative rulings. But given the economic impact of the pressing intellectual property issues our country faces – and considering the sweeping America Invents Act passed by Congress during the last decade – it’s clear that USPTOUnited States Patent and Trademark Office. See also PTO. rulemaking should be subject to the same OIRA review as any other agency.
This issue is critical as USPTOUnited States Patent and Trademark Office. See also PTO. Director Kathi Vidal recently indicated that the office is preparing to engage in rulemaking on its approach to discretionary denials, resulting from the NHK-Fintiv rule that was made precedential during the previous administration. This type of rulemaking should be subject to close OIRA review for a variety of reasons, but perhaps most importantly because the USPTOUnited States Patent and Trademark Office. See also PTO. must comply with Executive Order 12,866.
The executive order, signed by President Clinton, gives OIRA the authority to review agencies’ proposed rules to ensure they advance the public interest and do not harm the economy. For those that are deemed economically significant – meaning an annual effect on the economy of $100 million or more, or adversely affect the economy, jobs, and competition, among other factors – the agencies are required to do an in-depth review of both the costs and benefits of the action.
By OIRA’s own definitions, it’s clear that rules governing Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) review, including NHK–Fintiv, are “economically significant” issues. Following USPTO’s adoption of NHK–Fintiv, America’s largest semiconductor manufacturer, Intel, was ordered to pay more than $2 billion dollars to a non-practicing entity (NPENon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More) in an infringement lawsuit after being denied PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review on patents which the USPTOUnited States Patent and Trademark Office. See also PTO. has since admitted have “reasonable likelihood” of being invalid. This one decision, in and of itself, surpasses the $100 million threshold – not to mention the countless other examples of similar abusive litigation across the country.
But this isn’t just about one company. Numerous studies have shown that rules governing PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings clear, by far, the threshold needed to trigger OIRA review. This includes analysis that has shown that NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More generate almost $30 billion in direct out-of-pocket costs from targeted companies every year and that they have hundreds of millions of dollars worth of impact on targeted firms’ R&D spending. And even the impact on the agency’s workload and the amount of money and time they have diverted to dealing with these issues almost certainly exceeds $100 million of taxpayer dollars that could be better spent improving patent quality and merits-based review. All of which, statutory access to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review unfettered from political machinations could help prevent.
It’s abundantly clear that any action by USPTOUnited States Patent and Trademark Office. See also PTO. that would limit access to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings – as NHK-Fintiv did by increasing discretionary denials – is economically significant. OIRA must begin seriously engaging with USPTOUnited States Patent and Trademark Office. See also PTO. rulemaking, starting with regulatory economic analysis any time office engages on rulemaking related tosuperstatutory “discretionary” denials. With so much at stake the American people deserve this information – and the law demands it.