USPTO Director Kathi Vidal’s decision to issue the Advance Notice of Proposed Rulemaking (ANPRM) is the latest major controversy surrounding the Patent Trial and Appeal Board (PTAB). The American Invents Act (AIA) created the PTAB to supposedly provide a cheaper, faster alternative to district court patent litigation. However, the PTAB quickly gained a reputation for being a patent “death squad” that allows defendants to repeatedly challenge the same patents until those patents are invalidated.
During the last administration, former USPTO Director Andrei Iancu tried to correct that by limiting when patents could be challenged at the PTAB. Because those changes never finished going through the federal government’s rulemaking process, Vidal was able to quickly roll them back. The ANPRM now presents a litany of its own proposals for fixing fix how the PTAB operates and heated opposition on all sides.
Nicholas Matich joins Eli to talk about the ANPRM and what’s likely to happen with its proposals. Nick, who is now Principal at the patent litigation powerhouse McKool Smith, served as USPTO’s general counsel under Iancu after working at the White House and as Deputy GC of the OMB. This provides him with an unmatched understanding of how the rulemaking process actually works for proposals emanating from the USPTO.
Nick and Eli also discuss:
What Nick learned from working with Viet Dinh and/or Paul Clement at Bancroft PLLC
How the OMB reviews & approves agency rules
Serving as USPTO’s GC
Advice for influencing USPTO’s rules
Iancu’s Fintiv factors & how to explain swift reversal
Why the ANPRM was a mistake
Advice for future USPTO Directors
Ex-USPTO GC Nick Matich on Rulemaking & the PTAB