IN NEED OF UPDATING? The US Patent Office, circa 1891
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Like millions of Americans, I suffer from a common, and thankfully mild, heart rhythm problem. Fortunately, it is now possible to diagnose and treat this problem with a high degree of precision and effectiveness. It is easy to imagine how frightening this condition must have been before we had modern medical facilities for monitoring heart rate and for addressing anomalies. How can you effectively treat a condition without the means to understand the nature of the problem or the impact of your treatment? You clearly cannot and it would be folly, if not downright dangerous, to undertake the remediation of a condition that you could not adequately measure.

While the foregoing may seem self-evident, its misunderstanding underlies the woes afflicting the U.S. patent system. It is well known that our system is not functioning optimally and that poor patent quality is at the heart of its malady. Inventors, patent practitioners, the United States Patent and Trademark Office (USPTO), and the courts each shoulder some responsibility for this chronic condition.

It is understood that a principal agent underlying the patent-quality malaise is an overburdened U.S. patent system. There were approximately 1.2 million U.S. patent applications pending at the end of 2008 compared to approximately 275,000 pending at the end of 1997. That is a 439 percent increase in pending patents over the last 11 years. In addition to the sheer volume of patent applications clogging the patent office, the diversity and complexity of inventions has increased as science has expanded into new areas such as nanotechnology and genetic engineering. Many of these new innovations are cross-disciplinary, requiring patent examiners to have expertise in multiple technical areas. Thus, the patent office struggles to address the growing backlog of patents and to hire adequately trained patent examiners.

Compounding the challenges of backlog and staffing, and notwithstanding recent improvements, the standards for drafting and examining patents are not as clear or consistent as they need to be. The recent Supreme Court decision in KSR Int'l Co. v. Teleflex Inc. promises to make it easier for examiners to find obvious inventions unpatentable in view of a combination of prior publications. The non-obviousness requirement for patentability addresses the reality that often there is no single prior published document that describes how to build the invention, but rather the invention can be achieved by drawing ideas from several documents. The standard is that an invention that combines ideas from prior published material (“prior art” in patent-speak) must not be obvious to a person having ordinary skill in that field. For example, in the KSR case the Court found that an invention combining a gas pedal with the car’s electronic throttle control was obvious to those skilled in the field of automotive design in view of prior patents describing the function of both of these devices.

The KSR decision will assist examiners in issuing patents for inventions that are nonobvious, but the law does not provide sufficient guidance and procedural tools to examiners and applicants to ensure that the patent documents themselves adequately teach the public how to implement the patented invention. These ill-defined inventions fail to properly establish the scope of patent protection. The result is that too many patents that have not been adequately prepared or examined are being granted, discouraging would-be innovators from investing in innovation for fear of infringement. The National Academy of Sciences recognized the symptoms of declining U.S. patent quality in a 2004 report on the patent system, noting that there are reasons to think that the USPTO is issuing more and more substandard patents.