“The USPTO has recently proposed a number of very problematic changes to Inter Partes Review, most of which would make it much harder to use the program, create uncertainty, and expand patent trolling and other litigation abuses.” – Google letter
On Thursday, Reuters reported that Google sent a letter to the U.S. Patent and Trademark Office (USPTO) criticizing proposed rule changes that the tech firm believes will stifle U.S. innovation. The internet giant expressly pointed to the field of artificial intelligence as a weak point for the USPTO and its patent examiners. The letter was signed by Halimah DeLaine Prado, General Counsel for Google.
“The USPTO evaluates hundreds of thousands of claimed inventions each year, with an ever-growing percentage involving claims over new AI technology. Unfortunately, various new proposals would make it much harder for the agency to correct any errors in the patent examination process, stifling developers and U.S. innovation,” wrote DeLaine Prado.
In April, the USPTO issued an Advance Notice of Proposed Rulemaking that included potential changes to America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB). This included a proposal to create a rule that would allow the Office to deny inter partes review (IPR) proceedings “to ensure that certain for-profit, non-competitive entities do not use the IPR and PGR processes in ways that do not advance the mission and vision of the USPTO to promote innovation or the intent behind the AIA to improve patent quality and limit unnecessary and counterproductive litigation costs.”
However, Google asked the USPTO to maintain its current IPR process and withdraw the proposed rulemaking changes: “The USPTO has recently proposed a number of very problematic changes to Inter Partes Review, most of which would make it much harder to use the program, create uncertainty, and expand patent trolling and other litigation abuses,” DeLaine Prado continued
AI Innovation and IPR Proceedings
The bulk of Google’s page-and-a-half letter to the USPTO features artificial intelligence as a central concern. Google proposed three immediate actions that the USPTO could take that Google argued would be beneficial for its firm, as well as AI innovation.
Firstly, Google suggested that the USPTO maintain access to the IPR program by withdrawing proposals that would restrict access.
“If a patent challenge is timely and has merit, meeting the strict requirements Congress already put in place, it should be heard by the USPTO,” wrote DeLaine Prado.
AI Training for Patent Examiners
Google’s second suggestion to the USPTO was to develop comprehensive technical training for patent examiners so they can have a better understanding of AI innovation.
“While some examiners are experts in AI, others are experts in the area that the AI technology is being applied, and are less likely to have expertise in AI itself,” claimed DeLaine Prado.
The tech giant drew a comparison to the 1980s and the advent of software patents, when there was much less knowledge of the technology. Google claims this lack of knowledge on behalf of the USPTO resulted in “decades of low-quality and even frivolous software patents.”
Google made a similar proposal for AI technical training before the Senate Subcommittee on Intellectual Property in June. Google made the case that patent examiners need a good understanding of AI in order to evaluate patent applications.
Google’s final proposal to the USPTO was to increase patent filing and examination fees for large companies like Google to increase its budget for technical training.
The tech company additionally asked Congress to use fee-setting as a legislative opportunity to better equip the USPTO with the money and resources it needs to implement these changes.
“Patent policy has an important role to play in promoting AI innovation…That starts with the USPTO: the government agency at the heart of America’s culture of innovation. With these recommendations and by moving away from the current problematic proposals, we can preserve that culture and further unlock the potential of this emerging technology,” DeLaine Prado concluded.
Other tech firms, including Microsoft and IBM, have also voiced concerns about the USPTO’s proposed changes.