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On January 31, 2023, LES submitted comments in Response to a Request for Comment from the USPTO to Ensure the Robustness and Reliability of Patent Rights as published in the Federal Register.  The RFC addresses a variety of topics, including prior art searching, support for claimed subject matter, request for continued examination (RCE) practice, and restriction practice, and requested comments on questions posed in a June 8, 2022 letter from six U.S. Senators to the Undersecretary of Commerce for Intellectual Property and Director of the USPTO, Kathi Vidal.

LES expressed support for general initiatives relating to enhancing examiner training and ensuring that examiners are provided with state of the art search tools and other resources.  However, many of the initiatives are in the form of proposed changes to regulations and procedures affecting: the sufficiency of disclosure and clarity of claim language under 35 USC 112, restrictions on Continuation practice and the use of RCEs, changes to Restriction Practice, as well as other initiatives that would burden inventors and generally complicate and delay examination.

In  opposing the specific initiatives, LES offered the observation that the Senators’ June 8 letter described purported abuses of the patent system, but did not offer any evidence or data to support the existence or character of such abuses.  Likewise, the RFC itself did not offer any evidence of abuses or deficiencies in the various practices that would be affected by the proposed initiatives, nor did it show any evidence of consensus among the user community that abuses were occurring on any substantial scale, were negatively affecting the US patent system, or were generally perceived to be in need of improvement or modification.

LES agrees with US Senator Thom Tillis who has urged that the USPTO should not make significant changes to the US patent system without strong, compelling, fact-based evidence supporting such changes.  LES is of the view that the US patent system is a powerful economic engine, and is critical to the functioning of our world-leading innovation economy.  The USPTO should follow the path of evidence-based policy making, not policy-based evidence making.  As Senator Tillis has observed, certain critics of our patent system have asserted “facts” and “findings” purportedly showing deficiencies and abuses of our patent system, but which are of dubious merit, and lacking in transparency and reliability.  Those assertions do not justify the scale or character of the proposed initiatives, and thus the initiatives should not now be undertaken without more robust and reliable evidence.

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