USPTO Seeks Comments on Patent Small Claims Proceedings


By: Gene Quinn (

The United States Patent and Trademark Office (USPTO) is seeking comments regarding whether the United States government should develop a small claims mechanism for patent enforcement. The USPTO is interested in receiving comments from the public regarding whether there is both a need and a desire for this type of proceeding, in what circumstances such a small claims proceeding would be needed (if any), and what features any adopted small claims proceeding should include.

The Federal Register Notice explains that the USPTO’s interest in examining the possibility of adopting a patent small claims procedure relates to recent discussions the agency has had with Federal judges, private practitioners and various stakeholder groups and bar associations.

Specifically, the USPTO is interested in receiving comments directed to what should be the core characteristics of a patent small claims proceeding, if any. The USPTO is interested in comments on matters relating to appropriate subject matter jurisdiction, venue, case management, appellate review, and available remedies. Stating what should otherwise be obvious, the Federal Register Notice also explains that if a small claims proceeding is adopted, it must conform to the requirements of the U.S. Constitution. The USPTO specifically cites the Seventh Amendment as an illustrative example. Thus, to be seriously helpful, any comments provided should be mindful of the fact that the Constitution does have provisions relative to trials that cannot be ignored.

The Questions

The Federal Register Notice identifies the following three questions. Question 2, however, has at least 15 separated subparts.

Question 1:

The first question asks the public to provide a general description of the need (or lack thereof) for a patent small claims court or other streamlined proceedings. Those believing there to be a need for a patent small claims proceeding are asked to provide a description of which types of patent cases would benefit from such proceedings. Those who do not believe there is a need for a small claims patent proceeding are asked to explain why they believe such a procedure is unnecessary.

Question 2:

This question is for those who believe there is a need for a patent small claims proceeding, and asks for empirical data and analysis on the following issues. Of course, the USPTO says it is interested in receiving any information that might be useful even if it does not specifically address one of the enumerated questions.

Indeed, question 2 presents a laundry list of specific issues that would need to be addressed in order for a patent small claims system to become a reality.  The USPTO is interested in comments on the following:

  1. What are the possible venues for small claims proceedings, and should such proceedings be conducted by an Article I Court?
  2. What is the appropriate subject matter jurisdiction? For example, should counterclaims be allowed?
  3. Should the parties be required to agree to waive the right to a jury trial in order to pursue the small claims path?
  4. What would the required pleadings look like to initiate a small claims proceeding, and what if any particular evidence should be submitted to initiate the proceeding?
  5. What should the filing fee be to file a complaint?
  6. Should multiple defendants be able to be sued together in a single small claims case?
  7. Should attorneys be required to represent corporations?
  8. What remedies should be available, should there be a form of “loser pays,” and should attorneys’ fees be recoverable.
  9. Should mediation be mandatory?
  10. What type of record should be created? Should proceedings be transcribed and a written decision issued?
  11. What weight should be given in terms of precedent, res judicata, and estoppel?
  12. What appellate review should be available? An appeal to the Federal Circuit directly or first to a Federal District Court?
  13. What, if any, constitutional issues are implicated by the creation of a patent small claims procedure?
  14. Should the patent small claim proceedings be self-supporting financially?
  15. Should any patent small claims proceeding be first launched as a pilot program?

Question 3:

The USPTO also asks the public to share any concerns relative to any unintended negative consequences a patent small claims proceeding may lead to, along with any proposed safeguards that would reduce or eliminate the risk of any potential negative unintended consequences.

Sending in Comments and Further Information

Those wishing to provide comments for consideration are encouraged to do so by submitting written comments, which must be received on or before March 18, 2013. Comments can be sent to

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