Squires’ Latest PTAB Memo Seeks to Boost U.S. Manufacturing with New Discretionary Factors

The USPTO’s latest memo introduces additional discretionary factors when considering PTAB institution, particularly for American manufacturers. The memo directs the Patent Trial and Appeal Board to consider domestic manufacturing ties of both accused products and patent owner products, as well as whether a petitioner qualifies as a small business. 

While the memo reflects broader government efforts to strengthen U.S. industry, attorneys interviewed by IAM questioned whether the patent system is the right mechanism for achieving trade related goals. Many noted that the new factors resemble the International Trade Commission’s domestic industry requirement, but may be far more difficult to apply within the PTAB’s procedural constraints. Finnegan attorney Forrest Jones offered his insight  on the practical challenges the memo creates for litigants navigating PTAB proceedings. 

Forrest emphasized  the challenge  associated with trying to implement an ITC domestic industry style requirement at the PTAB. “You potentially end up having hundreds of pages to analyze exactly what investments are related to the patents, what is related to what is going on in the U.S. versus what is going on with the patent owner outside the U.S. This is asking you to do domestic industry in both directions in 20 pages. If you have all of the evidence, that seems challenging to handle when you're also considering all the other discretionary denial factors like examiner error or the status of a parallel litigation that you're putting in a brief.” 

Forrest also highlighted the difficulty of applying manufacturing based considerations to certain technologies, such as software related inventions. “For something where your patented method is on a computer and you're trying to identify the manufacturing for the computers that it can be operated on, that seems like a difficult task.” 

Read Squires’ Latest PTAB Memo Seeks to Boost US Manufacturing with New Discretionary Factors