[Federal Register Volume 77, Number 243 (Tuesday, December 18, 2012)]
[Notices]
[Pages 74830-74831]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-30483]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2012-0050]
Request for Comments on a Patent Small Claims Proceeding in the
United States
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
seeking comments as to whether the United States should develop a small
claims proceeding for patent enforcement. Among the information of
interest to the USPTO is whether there is a need and desire for this
type of proceeding, in what circumstances is this proceeding needed if
such a need exists, and what features this proceeding should possess.
In particular the USPTO seeks information about core characteristics of
a patent small claims proceeding including characteristics such as
subject matter jurisdiction, venue, case management, appellate review,
available remedies, and conformity with the U.S. constitutional
framework (e.g. 7th Amendment). Additional details may be found in the
supplementary information section of this notice.
DATES: To be ensured of consideration, written comments must be
received on or before March 18, 2013.
ADDRESSES: Written comments should be sent by email to
ip.policy@uspto.gov. Comments may also be submitted by postal mail
addressed to: Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313-1450,
ATTN: Elizabeth Shaw. Although comments may be submitted by postal
mail, the USPTO prefers to receive comments via email. Written comments
should be identified in the subject line of the email or postal mailing
as ``Patent Small Claims.''
Comments will be made publicly available after the comment period
via the USPTO Internet Web site (address: http://www.uspto.gov). As
such, information that is not desired to be made public, such as an
address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: David Gerk, Office of Policy and
External Affairs, by phone 571-272-9300, by email at
David.Gerk@uspto.gov or by mail addressed to: Mail Stop OPEA, United
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450, ATTN: David Gerk.
SUPPLEMENTARY INFORMATION: This inquiry correlates to several recent
discussions the USPTO has had with Federal judges, academia, private
practitioners and various stakeholder groups and bar and industry
associations, exploring the desire and need for a patent small claims
proceeding in the United States. The idea of a U.S. patent small claims
court, however, is not new, having been raised first by industry and
patent litigators over 20 years ago. In 1989, a conference hosted by
Franklin Pierce Law Center, in cooperation with the Kenneth J.
Germenshausen Center for the Law of Innovation and Entrepreneurship at
the University of New Hampshire, examined how to streamline patent
litigation through a small claims court. After this conference, both
the American Intellectual Property Law Association (AIPLA) and American
Bar Association Intellectual Property Section (ABA-IP) further
recognized the need for such a small claims solution, and adopted
measures to support a patent small claims court. In 1990, the
[[Page 74831]]
AIPLA endorsed the creation of a ``small'' claims patent court that was
described in Resolution 401.4, and in the same year the Secretary of
Commerce formed an Advisory Commission on Patent Law Reform, which
suggested further study of small claims procedures for patent cases in
Federal courts. While a U.S. patent small claims proposal failed to
advance further at that time, renewed discussion and consideration by
bar associations, industry groups, practitioners, and members of the
Federal judiciary, have now revived consideration and discussion of a
patent small claims proceeding in the United States.
On Thursday, May 10, 2012, a roundtable of intellectual property
experts co-sponsored by the USPTO and the United States Copyright
Office convened at The George Washington University Law School (GWU) to
consider the possible introduction of small claims proceedings for
patent and copyright claims in the United States. Conformity with the
U.S. Constitution and a potential structural framework for small claims
proceedings in the realm of patents and copyrights were among the
topics explored. On October 1, 2012, in continuation of the discussion
initiated at the GWU roundtable, the USPTO hosted a Patent Small Claims
Proceeding Forum composed of experts to discuss the concept of a patent
small claims proceeding. Now, the USPTO also seeks comments from the
public regarding a patent small claims proceeding.
Issues for Comment: Interested members of the public are invited to
submit written comments on issues that they believe are relevant to a
U.S. patent small claims proceeding. The topics and questions listed
below are included to identify specific issues upon which the USPTO is
interested in obtaining public opinion. The tenor of the following
questions should not be taken as an indication that the USPTO has taken
a position or is predisposed to any particular views.
Comments on One or More of the Following Would Be Helpful
1. Provide a general description of your understanding of the need
or lack of a need for a patent small claims court or other streamlined
proceedings. If you believe there is a need, please provide a
description of which types of patent cases would benefit from such
proceedings. If you believe that there is not a need for such a court
or proceedings, please share why you hold such a view.
2. Please share your views, along with any corresponding analysis
and empirical data, as to what a preferred patent small claims
proceeding should look like. In doing so, please comment on any of the
following issues:
(a) What the possible venues for a small claims proceeding should
be, including whether patent small claims should be heard by Federal
District Court judges or magistrates, whether patent small claims
should be handled by an Article I court, such as the U.S. Court of
Federal Claims, or whether patent small claims should be heard in
another venue not specifically listed here;
(b) What the preferred subject matter jurisdiction of the patent
small claims proceeding should be, including which if any claims,
counterclaims, and defenses should be permitted in a patent small
claims proceeding;
(c) Whether parties should agree to waive their right to a jury
trial as a condition of participating in a small claims proceeding;
(d) Whether there should be certain required pleadings or evidence
to initiate a small claims proceeding;
(e) Whether a filing fee should be required to initiate a small
claims proceeding and what the nature of that fee should be;
(f) Whether multiple parties should be able to file claims in a
small claims proceeding and whether multiple defendants may be sued
together;
(g) What role attorneys should have in a small claims proceeding
including whether corporations should be able to represent themselves;
(h) What the preferred case management characteristics that would
help to control the length and expense of a small claims proceeding
should be;
(i) What the preferred remedies in a small claims proceeding should
be including whether or not an injunction should be an available remedy
and any minimum threshold or maximum cap on damages that should be
imposed;
(j) Whether a small claims proceeding should include attorney's
fees or some form of a ``loser pays'' system;
(k) Whether a small claims proceeding should include mediation and
whether mediation should be mandatory or permissive;
(l) What type of record should be created during a small claims
proceeding including whether hearings should be transcribed and whether
a written decision should be issued;
(m) What weight should be given to a decision rendered in a small
claims proceeding in terms of precedent, res judicata, and estoppel;
(n) How should a decision in a small claims proceeding be enforced;
(o) What the nature of appellate review should be including whether
there should be a direct appeal to the U.S. Court of Appeals for the
Federal Circuit or whether there should be intermediate review by a
U.S. district court or some other venue;
(p) What, if any, constitutional issues would be raised by the
creation of Federal small claims proceedings including separation of
powers, the right to a jury trial, and/or due process;
(q) Whether the patent small claim proceedings should be self-
supporting financially, including whether the winning and/or losing
parties should be required to defray any administrative costs, and if
so, how would this be accomplished;
(r) Whether and how to evaluate patent small claims proceedings,
including whether evaluations should be periodic and whether the patent
small claims proceeding should be launched initially as a pilot
program; and
(s) Any other additional pertinent issues not identified above that
the USPTO should consider.
3. Please share any concerns you may have regarding any unintended
negative consequences of a patent small claims proceeding along with
any proposed safeguards that would reduce or eliminate the risk of any
potential negative unintended consequences, to the extent any such
concerns exist.
The USPTO will make any comments it receives publicly available via
the USPTO Internet Web site (address: http://www.uspto.gov). The USPTO
will also make various background materials regarding small claims
proceedings available via its Web site.
Dated: December 13, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-30483 Filed 12-17-12; 8:45 am]
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