Real Patent Reform

02 Aug

In several recent blogposts on his popular TechDirt blog, Michael Masnick suggest that “real patent reform”, should begin with the following:

Independent invention defense. In his [ed. Judge Posner’s] article, he even mentions that copyright already (effectively) has this. Copyright infringement has to involve copying. Patent infringement does not. The fact that so many patent infringement cases involve independent invention is lost on most people who don’t understand the system. Adding an independent invention defense would fix a very, very large percentage of the problems with the patent system today.
Independent invention as evidence of obviousness. This is very similar to the idea above, but slightly more nuanced. Patents are only supposed to be given if something is both new and non-obvious to a person of ordinary skill in the art. For the most part, patent examinations focus much more on the “new” part, and not whether the idea is “non-obvious.” Some people think that if an idea is new then clearly it’s non-obvious, but that’s not the case. Often there are obvious ideas that don’t go anywhere because the technology/market/etc. just isn’t ready yet. But if a number of different people “of ordinary skill in the art” are all coming to the same solution at around the same time, that certainly suggestions the invention itself is an obvious next step, and all such patents should be declared invalid.
Actually asking those skilled in the art. Patent examiners are often very skilled and highly educated, but they’re working in the patent office, not out in the field innovating. It’s not as easy as many people think to really keep up on the state of the art if you’re not working on it. Just think how many ridiculous patents we see all the time. Many of those bad patents could have been prevented if a patent examiner just went to people in the field and asked them. I know that some people criticize this idea, because they claim that (1) everything looks obvious in hindsight and (2) this will just lead jealous others to insist something is obvious to deny a patent, and then copy the idea themselves. Neither of these are convincing. I’m not saying to just ask, and if someone says it’s obvious, the patent is dead. Rather, the patent examiner could ask a few people for an explanation of why it’s obvious, and then determine if the reasons are convincing. Already, inventors effectively have “advocates” who argue for them that a patent is valid, so why not create the same sort of thing on the other side — setting up a true adversarial process — by seeking out experts who can explain why something may be obvious.
Get patents going back to the different circuit appeals courts, rather than funneling them all through CAFC. Having a single “patent” appeals court was an experiment, and I think it’s clear that it’s failed. The court, constantly spending time with patent lawyers, but not with innovators, clearly has an expansionist view of patents, and multiple judges refuse to recognize that patents could have any downside. Spread the cases around a bit, and hopefully you get some more judges who get past the cover story and see the real problems.


I have a different view of what real patent reform would look like, but see wisdom in all but the last of the suggestions from Mr. Masnick.

1. Independent Inventor defense. To me this should be a partial defense only, one that prevents an injunction and perhaps is taken into account in mitigation of damages, but which should not be an absolute defense.  The patent system was set up by James Madison, and modified as a result of objections by Thomas Jefferson, as a reward and incentive to the “true and first inventor” to disclose his invention to the public, for the benefit of the public and to promote the progress of the useful arts and sciences, so that the invention would not die with the inventor in secrecy.  It was never envisioned to be a defense that one independently later reinvented that which the inventor had already disclosed to the public.  If one independently invented prior to the patentee, then there was a Section 5 of the original act that allowed the prior inventor to invalidate the patent based on proof of prior invention.  However, the point of an independent inventor defense is that the independent inventor has, by definition as “independent”,  not received any benefit from the disclosure and thus should not be restricted by or pay any reward to the patentee. However, that defeats the incentive to disclose purpose of the patent laws by eliminating the risk of non-disclosure.  A compromise is in order to resolve these competing interests. To me the most logical compromise is to allow the independent inventor to continue to practice the invention but require the payment to the inventor of a reasonable royalty, taking in mitigation the independence of the independent inventor while enhancing the royalty by the benefit of the disclosure of the invention to the public. Thus where the invention was an incredible breakthrough of immense value to the progress of the useful arts and sciences and the prove of independence marginal there might be no reduction in the reasonable royalty.  And, by contrast, where the invention was of limited value to such progress, and the proof of independence of the later invention clear and convincing, there might be little or no royalty due from the later (or earlier but non-disclosing) independent inventor to the patentee.

2. Independent invention as evidence of obviousness. This is already the law, so no change is needed. Independent invention by others is relevant and admissible as evidence tending to show the invention is obvious to those of ordinary skill in the art. The more independent inventors, particularly contemporaneous, the more likely the invention was obvious to a PHOSITRA (mythical “Person Having Ordinary Skill In The Relevant Art”). One independent invention would likely not meet the burden of proof as such proof would more likely be evidenced that an ESPIRT (pronounced “expert”  for Extraordinarily Skilled Person In Relevant Technology) had come up with the same invention rather than a PHOSITRA. In contrast, if 10 routine researchers had independently come up with the same solution, it should be help obvious to a PHOSITRA. So, while independent invention might not be “prior art” it should nevertheless be “relevant art” for purposes of showing obviousness, and it’s status as secret or public should not be determinative. I would submit that there should be some cut-off period, such as one year after publication of the invention, after which evidence of independent invention shall not be accepted. And, evidence that the disclosure by the patentee of the invention was readily accessible to the alleged independent inventor should defeat the claim of independence.


3. Actually asking those skilled in the art. This sounds good in principle, but is impractical unless that means a patent examiner, or it occurs AFTER issuance of the patent. Otherwise, the invention is revealed to industry with no corresponding benefit to the applicant for patent. What a perverse turn of events it would be if an inventor would have the
Government reveal the invention to competition prior to granting a patent on it. Competition would try to shoot it down and steal it. What a disincentive to disclosure that would be. That would impose a penalty not a reward for filing a patent application. Perhaps this would work if those asked were made to sign a secrecy and non-use agreement prior to receipt of the disclosure of the invention, as that might benefit both the inventor and the industry reviewer so asked. There would likely be a need for compensation to the reviewer if we are to get the best reviewers. However, I think we already have such a system and that is what examiners do, serve as that expert. What is needed perhaps is better industry training of examiners if industry is not satisfied examiners are up to snuff in a particular technical area such as software and communication technologies where the pace is so incredibly fast and the compensation so much higher in industry than in the PTO.

4. Get patents going back to the different circuit appeals courts, rather than funneling them all through CAFC. This was not “an experiment” but rather a permanent change made in recognition that patents are Federal law and require special expertise not common in most Judges. There is nothing in the law that labels the CAFC either temporary or an experiment. It is disingenuous to call it an “experiment” after this many years. We require patent attorneys to be specially licensed to prosecute patents so it is entirely fitting and proper that we should have patent judges who have a similar level of expertise in patent law. In fact, most patent attorneys would contend that the CAFC has been relatively contractionist and not expansionist on patent rights. The CAFC was established to give more uniformity to patent law which prior to that time was quite divergent among the various circuits and often based on misunderstandings of patent law or aversion to technology. Circuit judges previously tended to take the most expedient route to divesting their docket of patent cases, so nonsensical summary findings of obviousness (or by contrast, of infringement) were common. The CAFC was, and is, prone to realize that bright-line tests may not always produce the best result in an individual case but are of overall benefit to industry by lending certainty to the patent system for purposes of reliance by investors on presence or absence of patent protection. It is the Supreme Court which has intervened in patent cases to quite often confuse the issues and give uncertainty to the system. So, I would say that what is needed is for the Supreme Court to give much greater deference to the Fed Circuit in patent cases, particularly where the CAFC is making bright-line tests that have some rational basis in the law.

Some perhaps better reform proposals:

A. Switch to a patent registration system, more like trademark or copyright registration.  This would drastically reduce the examination burden that is backlogging the patent system, as minor inventions of limited commercial significance are taking an inordinate amount of examiner time and effort, so much that they are overwhelming the system. This would swiftly eliminate the backlog of unexamined patent applications currently standing at over 700,000 and growing, which is causing such uncertainty in the patent system. It is not unusual for a patent not to issuance until the technology has been adopted by an entire industry not aware that a patent application is pending or, if aware, not knowing whether it will issue or what it will cover .  A registration system would result in publication and issuance within days or weeks rather than years. With the switch to electronic filing and the use of high speed scanners with advanced technology, already in place at the USPTO, we certainly have the technology to publish in days of filing. An opposition period could allow challenge and examination of issued patents and, just as with trademark oppositions, would likely be used mostly on just those patents that have commercial value.  Following that, the patent should be open to a cancellation proceeding up to 5 years after issuance and incontestability obtained by Declaration of Use some 5 years after issuance to quiet title for subsequent investment certainty. That would give certainty to patents, give quick issuance, give a prompt reward to the vast majority of applicants who will never license their inventions, and focus the patent examiners’ attention on those patents of commercial value.

B. Have the Patent Examiners Write the Patent Claims, Not the Applicant.  This would have two great benefits. First the cost and complexity of a patent applications could be drastically reduced. The application would disclose his or her best mode and the various alternatives and the patent examiner would evaluate that disclosure against the prior art and determine what it is that is new and unobvious and write patent claims to cover that.  The inventor can normally disclose the best mode but can seldom write a decent patent claim. This proposal would avoid the problem for independent inventors as the patent examiner would take on that task, and would presumably do it with a fair and comprehensible set of just a few claims rather than the myriad gobbledygook claims that are currently the norm. The applicant should be free to suggest claims in the application so that corporate patent attorneys can aide the patent examiners in that way, but the Examiner would be free to totally restructure and rewrite the claims.  This would even the playing field between big and small entities. As most patent attorneys and patent examiners will likely acknowledge, it is usually much easier to write claims from scratch than to decipher and edit someone else’s claims.

C. Mandate PTO interpartes examination of infringement and invalidity issues in infringement litigation (if not Incontestable) The examiners can make these decisions, usually in minutes or hours, rather than months or years as is the case with non-technically trained USDC judges or worse, unsophisticated juries. There are close to 7000 patent experts at the Patent Office, each with expertise in a special technical area unmatched by any court anywhere, and these are called “patent examiners”. This PTO Examining Corps currently makes thousands of these determinations each and every day and have a huge MPEP with detailed guidance that they know intimately and follow on a daily basis.  They have an academy of their own to assure this. They make every effort to be consistent with each other in their determinations and they generally know their respective arts very, very well. Yet, they are often currently bogged down in minutia. The PTO Examining Corps is not elected and, due to their high level of expertise, is relatively immune to bogus arguments of counsel, which levels the playing field for big and small entities. In contrast, most patent litigators know quite well that outcome in patent litigation often depends primarily on the money available for legal fees and the skill of the advocate more than on the merits or demerits of the case. If you can afford the very best litigation team you are likely to win and if you can’t you aren’t (unless both sides have to go cheap, in which case we often get an unpredictable and freaky case result.) Only where both sides are well funded can we expect a fully competent airing of the issues. Having the PTO determine these issues will produce far more objective and consistent determinations and those decisions will be based on technically competent reviews of the relevant art. The current system, frankly, relies on determinations by technically incompetent people of complex technical and legal issues.  Taking this into the PTO could completely turn that around, producing much fairer and more consistent results since in almost every case these results will come from a patent examiner who is an expert in the particular technology and who is familiar with what is being patented and what is being filed and thus in perhaps the best position of anyone in the world to know what is and isn’t obvious to that mythical PHOSITRA. There would no longer be a need to educate the examiner in either the technology or the law in most cases. Indeed, the examiner would likely take offense at such attempted instruction. This would be especially important to independent inventors who simply cannot afford multi-million-dollar patent litigations to educate unskilled judges sufficiently to enforce their patents. A PTO examination of these issues should take less than $10,000 in most cases rather than millions of dollars as is typical in patent infringement lawsuits. A patent enforcement proceeding would thus become feasible for a small inventor where presently such an inventor is in no position to effectively enforce a patent. The mechanism for this is already largely in place, called “supplemental examination (ex parte re-exam)”, “inter partes re-examination”, “post-grant opposition” and the like. In fact, infringement and invalidity determinations are what examiners now do and are specially trained to do. When an examiner examines for prior art, the examiner is looking to find prior art that “anticipates” the claim. If such art were subsequent it would “infringe.” (Hence a saying familiar to nearly every patent attorney and patent examiner “What infringes if later, anticipates if earlier”)  You see, it’s the same determination, and as noted, they do these determinations, usually instinctively in seconds, hundreds or thousands of times every day. In fact, the average patent examiner has surely done this thousands of times more  than any US District Court judge and has done it on the very technological field in question. Frankly, the comparison is like night and day (judges and juries being “in the dark” and examiners “seeing the light”). The appellate process for this is also established with the BPAI (Board of Patent Appeals and Interferences). With the establishment of branch offices, the locations for these determinations should be more convenient, thus achieving further cost savings to participants.





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  1. BR

    2012/10/01 at 7:30 am

    I agree that a “registration model” for our US patent system seems to be a great alternative deserving serious consideration/implementation.
    This would be like the registration model, proven-successful for many decades by the parallel protections of “Intellectual Property” for Trademarks and for Copyrights.
    Sadly, this past May 2012, this idea was never heard of by one touring USPTO official (whom I personally asked) and so the office might simply be clueless to consider it at all.

    • burdlaw1

      2012/10/17 at 4:57 am

      Yes, we agree. There are many details needed to implement such a system for patents, but seems to me it would be better than the mess we have now, where first to file will in effect be a very expensive registration process for big companies.