Just over 10 years ago, I worked with Rep. Lamar Smith (R-Texas), then-chairman of the House Judiciary Committee, to write what would become known as the Leahy-Smith America Invents Act (AIA) — the first bill in more than a half century that updated and modernized our patent laws.
As President Biden might say, it was a big deal. The AIA was significant not only because Democrats and Republicans put aside differences to write major economic legislation, but also because it brought real balance to our patent system and achieved many of the results we sought out when writing the legislation. In fact, one study showed that over five years, the cost-savings associated with the AIA led to an increase of nearly $3 billion in gross product and $1.5 billion in personal income.
Unfortunately, unilateral decisions made by the United States Patent and Trademark Office (USPTO) in recent years have weakened key aspects of the AIA — unraveling important progress and inserting unpredictability into the system. For example, the previous USPTO director, Andrei Iancu, implemented what became known as the NHK-Fintiv rule, going directly against Congress’s intent and limiting access to the Patent Trial and Appeal Board (PTAB) when parallel district court proceedings are ongoing. When writing the AIA, we created the PTAB to serve as an expert, more efficient, and less costly alternative to district court litigation. Ultimately, the Fintiv decision unraveled much of the progress we made and further emboldened the patent trolls targeting American innovators.
Now, the current USPTO director, Kathi Vidal, has announced that she is considering additional rulemaking that flies in the face of the AIA and exceeds her office’s statutory authority. The proposed rules announced so far would rewrite the AIA’s standard for instituting PTAB review from a “reasonable likelihood” threshold to a “compelling merits” test — which even the USPTO acknowledges is a higher threshold and will weaken access to review for job creators that are under attack.
Additionally, the USPTO is now proposing to change the standard for who can file a petition for review — contrary to the law Congress passed — by creating a new “standing” requirement for PTAB proceedings, which would limit petitions by “nonmarket competitors.” Congress considered this type of standing requirement when writing the AIA and decided not to include in the legislation. The reason was that each petition should be heard on the merits and decided on the validity of the patent, not based on who filed a petition for review. Going even further to limit access to review, the USPTO proposes shortening the deadline for filing a petition from one year after being sued to six months — yet another item that, after a thorough debate, Congress rejected during the drafting of the AIA.
In a hearing last month before the House Judiciary Committee, Director Vidal said she was “not aware of anything within the [proposed rules] that is inconsistent [with the AIA].” As the co-author of the AIA, however, I would encourage the director to revisit the text of the law that Congress wrote. I can say with absolute certainty that the proposed rules directly conflict with the legislation on a variety of matters, especially on provisions that limit access to the PTAB. Not only do USPTO rules clearly violate the statute, but they would also reverse so much of the economic progress we’ve made as a result of the AIA. American manufacturers and consumers would shoulder the burden.
The separation of powers exists for a reason: Congress writes the law, and the executive branch enforces the law. It is not the USPTO’s job to make new policy — that is up to Congress.
USPTO Director Vidal must abide by and enforce what Congress overwhelmingly passed through the AIA.
Patrick Leahy served as U.S. Senator from Vermont from 1975 to 2023 and was the former chairman of the Senate Judiciary Committee, and also served as the chairman of the Judiciary Subcommittee on Intellectual Property in the 117th Congress.