Lawyers and intellectual property groups are generally bullish on the U.S. Patent and Trademark Office’s idea for a small-claims process for patent disputes.
With little fanfare, the PTO published a request for comments in the Federal Register on Dec. 18. By March 18, the PTO wants comments on “whether there is a need and desire for this type of proceeding” and what form it should take.
The proposal comes on the heels of director David Kappos’ November announcement that he would leave the agency in January.
The Copyright Office issued a request for comments on small copyright claims procedures Aug. 23. On Sept. 14, it announced an extended comment period that ended Oct. 19.
The idea was first floated in the patent bar in 1989, and a PTO co-sponsored roundtable helped spark new interest this year.
The PTO seeks comments on several types of issues. Structural questions include venue, filing fees, records, whether the system should be financially self-supporting and evaluation of the system.
The PTO also wants comments about case issues. These include subject matter jurisdiction, such as claims, counterclaims and defenses; whether parties waive their right to a jury trial; whether to allow multi-plaintiff and multi-defendant cases; types of pleadings and evidence; the role of attorneys; and remedies including attorney fees.
The agency also seeks input on larger legal questions including precedents, enforcement, appellate review and constitutional issues.
The American Intellectual Property Law Association “is favorably inclined to the overall idea of creating a less expensive proceeding for small inventors to be able to enforce their rights” said director of legal affairs Jim Crowne.
AIPLA has asked its patent litigation committee to come up with procedural ideas for the request for comments, he said.
A small claims proceeding could greatly help small business clients with patent infringement claims against other small businesses because jury trials are so expensive, said Erik Belt, an intellectual property partner in the Boston office of McCarter & English.
“A small patent claims court would allow inventors, universities and small firms to get their day in court without having to spend millions of dollars,” said Alexander Poltorak, founder and chairman of American Innovators for Patent Reform, a coalition of inventors, companies and licensing executives.
But Edward Reines, a Redwood Shores, California, technology litigation partner at Weil, Gotshal & Manges, expressed concern about a new PTO initiative amid a host of other changes, including several stemming from the patent reform act that took effect in September 2011.
“If the patent office can pull this off, on top of all the other new types of proceedings it has started up, that would be impressive,” Reines said.