Anonymity in Reexams at Risk as USPTO Director Proposes RPI Disclosure Rule

Jason Eisenberg, director and Chair for the firm’s Reexamination, Supplemental Examination, and Reissue Practice, spoke to IAM on the recent notice of proposed rulemaking from U.S. Patent and Trademark Office (USPTO) director John Squires that would require reexamination requesters identify all real parties in interest (RPI).

“A FOIA request, subpoena and district court suit against the office may be tools a patent owner tries to use to pursue the identity of the RPIs of a challenger. And with the right arguments or judges it could be possible under the right circumstances that it’s granted, and the confidentiality of the submission is broken,” said Eisenberg.

He also added that there have been glitches in USPTO software and websites revealing confidential information, “That past history with glitches globally is enough to show there is no guarantee here it will always remain confidential.”

Eisenberg noted the rule may help patent owners by limiting repeated challenges, but that patent owners “may also use this to pursue breaking the confidentiality within the office or in court to gain information about challengers of their patents that would previously not be available to them.”

On a procedural level, Eisenberg said it is easy enough to comply but there are still questions with the proposed rule. “If the patent owner files a FOIA request or sues the USPTO to challenge non-disclosure, will the requester have the ability to participate in the arguments to stop the patent owner from trying to break through the confidentiality wall?”