The Day One Project Examined: USPTO Transition Proposals Advocate Questionable PTAB, Section 101 Policies

By Steve Brachmann
January 28, 2021

“While it’s good to see that some attention is being paid to creating a level playing field for patentees at the PTAB through estoppel and encouraging claim amendments, the Day One Project certainly didn’t give those proposals the level of detail that pro-petitioner policies like increasing the grounds for invalidation in IPR received.”

Patent Office magnified.Recently, the Day One Project, an initiative of the Federation of American Scientists, released a transition document drafted by a collection of veteran policymakers discussing a range of policy ideas to be implemented at the U.S. Patent and Trademark Office (USPTO) starting from the earliest days of the Biden Administration. The ideas advocated by the Day One Project focus on a mix of policies related to diversity, international IP systems, patent quality, agency budgeting and governance and ways that the USPTO can contribute to broader administrative policy initiatives. The full list of contributors to the project is available here.

While there are many sound policy positions advocated by the Day One Project, patent owners may want to be aware of the document’s stance on the “public benefit of PTAB review of a patent” as well as the agency’s role in developing policy on patentable subject matter reform. Interestingly, the policy document indicates that there is broad consensus for continuing policies from the Trump Administration relating to China’s influence on the world of intellectual property.

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Patent Quality Proposals Focus on Maintaining ‘Public Benefit of PTAB Review’

The transition document’s cover memo indicates that top policy priorities for the USPTO will include “the need to achieve balance” by “balanc[ing] incentives for innovation with access to new technologies… [C]ontinued efforts to improve and maintain patent quality will be USPTO’s most important day-to-day contribution to America’s innovation economy.” While there’s no sense that the Biden Administration will release its pick for USPTO Director any time soon, the suggested policies represent what the document’s collaborators believe were policy areas that the next Director could address immediately.

“There is broad consensus that the PTAB is a useful tool to reduce issues for litigation and increase business certainty,” according to the Day One Project transition document, although it’s hard to determine how the PTAB increases business certainty for many patent owners who have dealt with harassing multiple petitions preventing their ability to enforce patent rights against alleged infringers with deep financial resources. Duke University School of Law Professor Arti Rai proposed that the new USPTO regime work with Congress to pass legislation establishing PTAB administrative patent judges (APJs) as inferior officers to answer questions raised by Arthrex v. Smith & Nephew, which is currently at the U.S. Supreme Court.

Stephen Yelderman, Associate Professor at Notre Dame Law School, suggested various non-merits factors that could be considered by PTAB APJs when deciding whether to institute a petition for inter partes review (IPR), including the age of the patent, the value of the commercial market relevant to the patented technology and the patent’s prior litigation history. “These factors are not spelled out in 35 U.S.C. §311 et seq., but the Director likely has (unreviewable) discretion to consider such factors in IPR grant decisions,” Yelderman’s proposal reads. He adds that these factors could become more important in decisions if PTAB resources constrain the number of IPRs that can be granted by the Board. A proposal from Loyola Law School Professor Justin Hughes suggested that USPTO leadership work with Congress to increase the grounds for invalidation in IPRs to cover Section 112 enablement and double patenting issues.

In addition to those PTAB proposals, the Day One Project’s transition document suggests that the next USPTO Director should be prepared to explore several other PTAB ideas including the creation of a reexamination off-ramp for amending claims, expanding estoppel provisions and achieving better coordination between the PTAB and district court. While it’s good to see that some attention is being paid to creating a level playing field for patentees at the PTAB through estoppel and encouraging claim amendments, the Day One Project certainly didn’t give those proposals the level of detail that pro-petitioner policies like increasing the grounds for invalidation in IPR received. That alone would give many patent owners reason to be discouraged by the Day One Project’s overall policy proposal.

Section 101 Proposal May Indicate Willingness to Change Course on Iancu Reforms

Yelderman also drafted a proposal on patentable subject matter reform policy that may signal an effort to reconsider efforts made by Director Iancu to bring more clarity to Section 101 issues. After acknowledging the large number of U.S. Supreme Court certiorari denials on Section 101 questions and legislative efforts to fix Section 101 eligibility, Yelderman notes that “a new Congress and a new President would have a fresh opportunity to address these issues.” Yelderman suggests that the agency’s engagement on Section 101 should involve hosting roundtable discussions, preparing comprehensive reports on various perspectives on Section 101, as well as collecting information on patent eligibility standards internationally in Europe, Japan, China and Korea. While Yelderman’s proposal doesn’t express a viewpoint on whether Section 101 eligibility should be expanded or constricted, his openness to changing course on much of Director Iancu’s work in that area cannot be welcome news to many practitioners who have welcomed Iancu’s guidance on Section 101.

Another Arti Rai policy proposal regarding patent quality would increase collaboration between the USPTO and other federal agencies like the Food & Drug Administration (FDA) and the U.S. Department of Energy (DOE) to increase prior art references for use by patent examiners during prosecution. Yelderman and Santa Clara University School of Law Professor Colleen Chien were part of a group proposing that the USPTO should de-identify patent applications to reduce potential gender- or race-based examiner biases. Former USPTO Acting Director Teresa Rea and Former USPTO Deputy Director Sharon Barner advocated for a pilot program designed to to increase work sharing arrangements among Big 5 patents offices including the USPTO, European Patent Office, Japan Patent Office, Korean Intellectual Property Office and China’s National Intellectual Property Administration. Such an effort could improve prior art identification and reduce the amount of time examiners spend prosecuting patent applications.

‘Broad Consensus’ in Favor of Trump’s IP Policies on China

While many Biden voters may have thought that a Democratic presidential administration would have represented a complete about-face from many Trump Administration policies, “[t]here is broad consensus that U.S.-China relations cannot and should not return to their pre-2017 form,” according to Mark Allen Cohen, Distinguished Senior Fellow at UC Berkeley. However, while the incoming administration should address Chinese activities that negatively affect U.S. interests, Cohen argues that opportunities for U.S.-China collaboration still exist. He also pushes for the creation of a long-term inter-agency task force to develop coordinated responses by the federal government to Chinese IP policies. Under the Day One Project’s governance insights, collaborators observed that “[i]n a US-China relationship that will be intensely competitive in some areas and productively cooperative in others, PTO should press the new administration for guideposts on what outreach and initiatives will be appropriate.”

Several other policy areas of interest for the incoming USPTO administration are identified in the Day One Project’s transition document, including equity and diversity initiatives, USPTO budgeting and governance, international IP regimes and broader administration goals involving the USPTO. Equity initiatives include mandating information collections on patent applicant demographics, which would be firewalled from the agency’s examination workforce, and developing more incentives for minority inventors. Budgeting and governance proposals cover raising initial fees to account for declines in maintenance fees and reduce fraudulent filings, recalibrating patent maintenance fees to “encourage patent holders to further assess patent value and thereby move some innovations into the public domain more quickly,” establishing a Bureau of Economics within the USPTO and pursuing legislation to give the USPTO substantive rulemaking authority.

International Proposals

While the Day One Project’s international IP policy proposals include a good deal of focus on China, collaborators also advocate for exploring opportunities at the World Intellectual Property Organization’s Intergovernmental Committee for achieving consensus on international patent issues, increasing cross-agency collaboration on digitized genetic sequence information, and giving the USPTO authority to recommend international IP Attachés for counselor status with foreign governments based on individual experience and qualifications. Several other policy proposals for interacting with broader administration initiatives include convening a cross-agency task force on drug pricing; developing more robust systems for using USPTO data; establishing a small claims court for patent infringement similar to the UK’s Intellectual Property Enterprise Court; expanding the Patents for Humanity award program for inventors addressing global humanitarian concerns; prioritizing global access to medicines in international trade negotiations; and creating Blue Ribbon Commissions for developing comprehensive U.S. strategies on innovation and current issues with the patent system.

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The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments.

  1. Pro Say January 28, 2021 3:35 pm

    “There is broad consensus that the PTAB is a useful tool to reduce issues for litigation and increase business certainty,”

    One word: B.U.L.L.S.-.-.-.

    Name the members of this alleged, “consensus” Federation.

    Go ahead — name them.

    While that WAS the primary rationale for creating the PTAB, the blinding light of actual facts from actual PTAB / District Court cases have shown the exact opposite to be the case.

    The. Exact. Opposite.

  2. Anon January 28, 2021 5:07 pm

    I do have to wonder whether the people contributing to that project were aware that their names may be (inadvertently or otherwise) associated with “suggestions” made by others on completely unrelated items to which the persons may have been directly (and only) contributing to.

    Many of the items in the document are being spun as having achieved some type of “buy-in” and concurrence of ALL of the names of contributors.

    My understanding is that this is just NOT the case.

    A statement (one way or the other) should be added by whoever it was that published the final document.

  3. Model 101 January 28, 2021 6:22 pm

    What about the constitution Day 1ers?

    Congress mskes the laws.

    101 is unconstitutional.

    PTAB judges are not real judges.

  4. Sarita Pickett January 29, 2021 9:35 am

    A further clarification: in addition to the Transition plan not being fully supported by all potential authors, it is also not advocated by the Day One Project either. The Day One Project is simply a program for accepting any and all policy proposals—good and bad. The website clearly states that they “give *anyone* with a promising science and technology policy idea the tools to develop a concrete proposal for action.” (Emphasis is mine). Individual concepts were also published, for example, Brian Cassidy’s concept for a new prosecution strategy: https://www.dayoneproject.org/post/streamlining-the-patent-application-process-to-nurture-the-innovation-of-tomorrow

  5. Anon January 29, 2021 7:17 pm

    Thanks Sarita,

    The Day One Project people should take a bit more responsibility then for how its ‘product’ is being used.

    As well, those ‘using’ the product should also be held accountable for the only too easily seen misrepresentations that flow from such an amalgamation.

    Thanks also for the link to the Cassidy piece: its far more ‘you must do X’ than I like.

  6. B February 1, 2021 12:23 pm

    “Yelderman notes that ‘a new Congress and a new President would have a fresh opportunity to address these issues.’”

    Pleeeeeeaaaaassssee, the new Congress is the same as the old Congress and, as with Obama/Biden, I suspect that Biden/Harris will be devastating in their CAFC judicial picks. We can’t afford another Taranto, Hughes, Stoll, or Reyna pontificating ignorance from the bench.

  7. concerned February 1, 2021 12:48 pm

    I just received my PTAB affirmance of the Examiner’s rejection. I was told by posters on this blog that this Examiner affirmance would occur, not on merit, but by rote. I also maintained that the Examiner’s rejection was without merit throughout my prosecution.

    I was correct. The Examiner’s rejections were not supported by the PTAB. Instead, the PTAB created another grounds for rejection, which seems even more illogical than the Examiner’s arguments. (The examiner did not even go down the PTAB rejection path as it is absurd on the surface).

    In addition, the PTAB like the Examiner, failed to address our argument that the inventive concept is not abstract as nowhere in commerce and on Earth has our inventive step been used in commerce. By law, the PTAB has to address our arguments even if it defeats their position.

    The PTAB also stated that my process failed to state how the inventive concept occurred. Wrong! The process is clearly in the claims and the specifications (step by concrete step). The PTAB referenced the wrong specification numbers in their response.

    After the USPTO switched examiners during prosecution and the PTAB switched rejection arguments, one has to think the USPTO is silently mandated to defeat patent applications instead of supporting solutions that benefit society.

    Of course we appeal. Does this madness ever stop?

  8. Anon February 1, 2021 3:33 pm

    B,

    To your point here, and augmenting the comments that I have already offered, the organization that compiled its publication may have selectively included a number of prominent pro-patent voices in order to provide a sheen of respectability to the entirety of the suggestions.

    One has but to look at the names of the principals (and of the council) to see a plethora of Obama strategists and others who are without a doubt trying to insert Liberal Left spin into the innovation protection system.

    This background would seem to support an assertion that the lack of clarity as to the nature of the document was indeed purposeful.

  9. B February 1, 2021 10:43 pm

    @ concerned “the PTAB like the Examiner, failed to address our argument that the inventive concept is not abstract as nowhere in commerce and on Earth has our inventive step been used in commerce. By law, the PTAB has to address our arguments even if it defeats their position.”

    FYI, if you were never provided an opportunity to address the substance of the PTAB’s new rejection, you’re prejudiced w/i the meaning of s706 of the APA. This requires the CAFC to set aside the PTAB decision as an issue of law.

    But since we’re talking the CAFC they’ll ignore the law and give you a big *DERP* or R36

  10. concerned February 2, 2021 7:29 am

    B:

    Thank you once again. A 60 day appeal was extended. I might as well been given 600 years as I do not think the USPTO will grant a patent under any circumstances. It has been reject at all costs.

    Even if my process is abstract, the PTAB was given SCOTUS and USPTO references that stated abstract processes can be patented that contained a new and useful outcome. The Examiner admitted the process solved a problem that has escaped at least one million working professionals at various Federal agencies/private attorneys since 1956. We even “unwittingly” supplied evidence that proved that the upcoming new PTAB grounds of rejection (mental process) cannot be correct as that approach failed in 2 university studies, the Social Security Administration and by every Medicaid authority in the country. It takes our inventive concept that won the day as admitted by the Examiner as certainly working professionals can apply a mental process. It was my 38th year in this career field before the solution was developed by me and I was considered an expert by many of my peers before the discovery.

    In fact, if these professional could simply apply a mental process to prevent the financial carnage that occurs from these oversights solved by my process and the professionals did not willfully apply the same over the last 65 years, those professionals would be complicit in Social Security and Medicaid fraud. Of course, this situation is not the conspiracy implied by the PTAB rejection, but a reject the patent application at all cost mentality that takes no prisoners.

    PTAB response in their rejection to many of our arguments and official record: (crickets)

  11. Anon February 2, 2021 7:53 am

    Concerned,
    While perhaps merely semantics, please be careful to use the correct phrasing.

    Rather than “contained a new and useful outcome

    Use: “directed to a practical application.”

  12. Concerned February 2, 2021 10:15 am

    Anon and B:

    Both of your contributions to this forum are appreciated by me and by many others.

    Thank you!

  13. ipguy February 2, 2021 9:46 pm

    @3

    “Congress mskes the laws.”

    Well, everyone mskes mistakes.

  14. B February 4, 2021 2:52 pm

    @ concerned “Even if my process is abstract, the PTAB was given SCOTUS and USPTO references that stated abstract processes can be patented that contained a new and useful outcome.”

    First issue: The PTAB doesn’t follow the rules and the CAFC will not enforce those rules under the APA

    Second: The word “abstract” is as meaningless as “inventive concept.” Ask a single judge to define either term. It used to mean “too broad,” but that is a load of horse droppings.

    Third, the black-robed morons at the CAFC can’t even decide if the terms are issues of fact or issues of law one day to the next, and the toads that serve the black-robed morons are of no help. Bottom line: the terms are issues of fact. Seems to me an expert opinion should be all that is necessary to address the issue, but since no one knows what the terms actually mean (besides me and a few dozen other attorneys – none of whom work on Madison Place), who is qualified to be an expert on meaningless terms?

    BTW, the attorney who represented Berkheimer wrote some brilliant stuff in his SCOTUS opposition brief that hits at the heart of the problem: no one knows how these issues are decided.

  15. concerned February 4, 2021 6:30 pm

    The PTAB did agree with me over the examiner that the process was directed to overlooked SSDI caused by errors and omissions by working professionals. Then the PTAB contradicted themselves by stating the solution was simply a mental process.

    Then how do the working professionals keep making the same mistakes since 1956? Even the examiner had enough sense to not advance the mental process argument.

  16. B February 4, 2021 8:35 pm

    “The PTAB did agree with me over the examiner that the process was directed to overlooked SSDI caused by errors and omissions by working professionals. Then the PTAB contradicted themselves by stating the solution was simply a mental process.”

    The PTAB contradicts itself all the time, and makes idiot conclusions designed to affirm the Examiner by any means possible. If your case didn’t involve $$$, but calculated an optimal wind flow over a wing, it wouldn’t be a “mental process.”

    BTW, the “mental process” b.s. lingo comes from bad court decisions made before the 1952 Patent Act, which was designed to overturn the bad court decisions. Then Justice Stevens resurrected the lingo by referring to these old cases without addressing the language of 101 as was introduced in the 1952 Patent Act. Since then, the Supreme Court has traditionally addressed patent cases as if the Constitution doesn’t exist, statutory language is optional (“shall,” schmael, who cares), and they know better than Congress.

  17. Concerned February 5, 2021 6:23 am

    I am not a lawyer. My career did include being the statutory agent for an entire Chapter of the code for my Department for decades.

    One of the first things I noticed about the patent system: There is no Rule of Law.

    Added words, undefined added words, switching examiners, switching arguments, tossing evidence, tossing official memos, etc.

    If it was not for no law, there would not be any law at all.

    I have one patent application that tries to help people, their caregivers, the State and Federal governments. I hope I never have to come this direction ever again.