Opinions and Editorials

Feb. 18, 2022

Thomson Reuters Foundation: Big Tech is Abusing the U.S. Patent Challenge System by Judge Michel

In November, a district court judge in Northern California dismissed a lawsuit those firms had filed against the U.S. Patent and Trademark Office. They were trying to strip away USPTO’s discretionary authority to consider – or not consider – a certain type of patent challenge.

The Big Tech firms are appealing this ruling, but they face long odds in the circuit courts and Supreme Court. So they’re pursuing a parallel attack, with the help of their allies in Congress. Tech lobbyists are urging legislators to revamp a decade-old bipartisan law to weaken the USPTO – and the patent protections that undergird the American economy.

There are various legitimate ways to challenge a patent. One avenue is the courts. Another way, which takes place within the USPTO, is known as an inter partes review. An individual, organization, or company can request an inter partes review, essentially asking the USPTO to take a second look at whether a patent should have been granted. Before issuing a patent in the first place, USPTO officials must determine that the invention in question is novel, non-obvious, and useful. The same standard applies to all inventors, regardless of their industry.

Inter partes reviews, which Congress created in 2011 through the America Invents Act, can serve a valuable purpose. Lawmakers envisioned them as a quicker – and thus cheaper – alternative way for companies to challenge patents that should have never been granted, rather than going through the judicial system.