Do We Need a Small Claims Court for Patent Disputes?

09 May 2022 IP Litigation Current Blog
Author(s): Andrew M. Gross

On May 3, 2022, the Administrative Conference of the United States (“ACUS”) announced that the United States Patent and Trademark Office (“USPTO”) had engaged ACUS to conduct an independent study into the issues associated with, and the design of, a small claims patent court.  87 Fed. Reg. 26183 (May 3, 2022).  The ACUS invites public comments on the study, which are due by July 5, 2022.

The concept of a small claims patent court is not new.  This new study, however, suggests ongoing or renewed interest in such a court.  Since at least the late 1980s, concerns have been raised that the cost of patent litigation in federal court “deters small- and medium-sized enterprises, including those owned by traditionally underrepresented groups, from seeking to enforce their patents.”  Indeed, the Department of Commerce investigated the possibility of a small claims patent court approximately 10 years ago.  In 2012, then Director of the USPTO David Kappos issued a Federal Register notice seeking public comments on “whether the United States should develop a small claims proceeding for patent enforcement.”  77 Fed. Reg. 74830 (Dec. 18, 2012). 

The notice of this new study comes nearly a year after a bipartisan group of six senators sent a letter to the Commissioner for Patents, requesting that the USPTO engage ACUS for such a study.  In that July 27, 2021 letter, Senators Christopher Coons (D-DE), John Cornyn III (R-TX), Thomas Cotton (R-AR), Mazie Hirono (D-HI), Patrick Leahy (D-VT), and Thomas Tillis (R-NC) referenced the 2012 Federal Register notice and stated that the USPTO had “not followed up on that notice” and that a new study “is warranted to refocus on this important matter.”  The letter requested that the USPTO fund and engage the ACUS for the study and that the study be provided to the Senate Judiciary Committee no later than December 31, 2022.

The new Federal Register notice states that the USPTO “engaged ACUS to conduct an independent survey and analysis of issues associated with and options to consider in designing a small claims patent court.”  The notice specifically requests public comment on the following issues:

1. Whether there is need for a small claims patent court;

2. The policy and practical considerations in establishing a small claims patent court;

3. The institutional placement, structure, and internal organization of a potential small claims patent court, including whether it should be established within the Article III federal courts, as or within an Article I court, or as an administrative tribunal;

4. The selection, appointment, management, and oversight of officials who preside over proceedings in a potential small claims patent court;

5. The subject-matter jurisdiction of a potential small claims patent court, whether participation in such proceedings would be mandatory or voluntary, and whether parties can remove cases to another administrative tribunal or federal court;

6. The procedures and rules of practice for a potential small claims patent court, including, as relevant, pleadings, discovery, and alternative dispute resolution;

7. The remedies that a potential small claims patent court would be able to provide;

8. The legal effect of decisions of a potential small claims patent court; and

9. Opportunities for administrative and/or judicial review of small claims patent court decisions.

As the enumerated issues suggest, there is a broad range of possibilities for how a small claims patent court could be structured and implemented.  Whether such a court comes to fruition, and how it is structured, will impact patent holders and accused infringers alike.

Those interested in providing comments to ACUS may do so by email (, adding “Small Claims Patent Court Comments” in the subject line of the message); online at; or by U.S. Mail addressed to Small Claims Patent Court Comments, Administrative Conference of the United States, Suite 706 South, 1120 20th Street NW, Washington, DC 20036.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services