Tech and Life Sciences Companies Urge USPTO to Abandon Proposed Patent Rule

2 minute read | July.10.2024

  • An Orrick IP team today urged the U.S. Patent and Trademark Office and agency director Kathi Vidal to withdraw a proposed rule because of its potential threat to patent practice and innovation in the tech and life sciences sectors. The commentary to the proposed rule was filed on behalf of major tech companies, including DISH Network, RingCentral, Sonos, and NAGRA Kudelski Group, and life sciences innovators Capstan Therapeutic and Nutcracker Therapeutics.
  • In a letter to the USPTO, the companies warn that the proposed rule would radically change patent litigation in the US. It would ease and expedite the ability for related patents to be stamped out en masse, without considering them on their merits. The proposal calls for an inventor’s rights in one patent—voluntarily related to a different patent in terms of ownership and term—to be extinguished by an invalidity determination for any claim in the other patent. Nearly 20 percent of the hundreds of thousands of patents issued in 2023 alone are so related, reflecting the enormous impact of the proposal.
  • The letter cites five reasons the rule should be abandoned: 1) It is contrary to existing law and would not survive court challenges. 2) It does not address any existing business problem. 3) It will increase the agency’s backlog while at the same time encouraging litigation abuses and sow confusion in the courts. 4) It will have negative consequences for both startups and established innovators. 5) It will have widespread negative consequences across patents, even patents from entirely different families.

The letter to the USPTO can be read here. IP partners Clem Roberts, Alyssa Caridis and Irena Royzman and associate Samantha Leff led the effort for the tech and life sciences companies. The team also recently wrote this Bloomberg Law article on the issue.