[Federal Register Volume 77, Number 243 (Tuesday, December 18, 2012)]
[Notices]
[Pages 74830-74831]
From the Federal Register Online via the Government Publishing 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 
[email protected]. 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 
[email protected] 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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