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.
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4 Comments
Add CommentMy name appears on a number of patents issued to the electronics company I worked for, and I reviewed many patents submitted by other engineers. The company paid a bonus for a reasonable disclosure submission. My opinion is that too much engineering time was spent on "novel way to lay bricks" patents at the expense of developing useful products in a timely manner.
Reply | Report Abuse | Link to thisI am an independent inventor.
Reply | Report Abuse | Link to thisI have yet to see any patent reform effort that considers the problems independent inventors have with the patent system or with the large companies. Yet, few honest people would deny that independent inventors continue to be a vital force driving innovation.
We hear a great deal of complaining about how the independents abuse large companies. Some do. But the reverse is also true.
A case in point:
After failing to get venture capital, I tried to sell my first patent. I demonstrated technology using that patent (a computer application) to 19 different companies. No one was interested in buying it. I demonstrated it to one company four different times. In less than two years after my demos, two very large companies---both of which are household names---put my technology in their products. I did not receive a dime. When I complained, one company was nice, but claimed no infringment. The other replied with a vicious threat. A litigator told me it would cost $300,000 just to launch a court case and probably a couple of million more to pursue it. (This was more than ten years ago.) I did not have the money. But while trying to weigh my options, a company that had never seen a demo bought the patent. It has been worth a couple of hundred million dollars to them. I got a few hundred thousand, and was very glad to get it. I have since been granted other patents, most of which I have also sold.
I doubt that my story is unique.
One lesson here is that big money usually wins. Is anyone surprised?
What is needed for independent inventors is a system wherein they could file a document permitting anyone to use their invention simply by paying a modest royalty. It would also be agreed that damages against infringers would be limited IF they had paid for a legal search of existing patents and applications prior to releasing their product.
So far as more efficient and improved examination is concerned, I also have some suggestions, which are probably not new:
First, stop Congress from grabbing the USPTO's revenue, and use that money to staff up the Office, and to give real pay raises.
Second, the USPTO has a list of inventors and their addresses. Pay any who will comment on applications filed in their fields.
Third, be quite sure that new Examiners whose first language is not English (and there are many) have truly excellent English skills.
Yes, the USPTO is not what it should be. Unfortunately, they are head and shoulders above the Patent offices in China and India. I have dealt with each.
What happens when someone buys the patent but sits on it to stall it?
Reply | Report Abuse | Link to thisWhat happens when someone buys a patent from you but sits on it to stall it?
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