For several years running, Congress and industry groups have floated proposals for reforming the 1952 Patent Act. Each round of proposals is followed with a round of commentaries and critiques. The “ills” of the system, a blight of “bad patents,” the Federal Circuit panels run “amok,” worrisome “trolls,” deadweight on the American “engine” of innovation, and a host of colorful metaphors populate the hue and cry about patents and patent reform. Ideas for reform are gleaned from foreign practice, from litigation and licensing statistics, from academia and bureaucracia, and from inventors large and small. The problems and the proposals conflate and dissociate, or become arcs that lead and trail the circular arguments around them.
Crafting reforms that are comprehensive – not interstitial or amendatory; that are purposeful – not self-serving to one, but not all groups; and, that can re-define the landscape may require taking apart what is liked and adding back more of what is disliked. It may require making old problems into new solutions. So, here goes.
Outsourcing. I hate how work once done by the patent office now is done by outside contractors. Look at a patent docket on PAIR, and so many entries indicate time passing as papers are passed from the USPTO to contractors and back. Some propose to eliminate outsourcing, and appropriate more money for the patent office. Instead of that retreat to the past, or to toss more dough on the problem, my first proposal is increase outsourcing and reduce the number of examiners who are government employees. Replace that with grant money, awarded to groups at universities and institutes, who will assess patentability, once the USPTO determines a filed application is “complete.” Who could provide a greater level of specific knowledge within a pertinent art, and speak to the level of skill, the novelty and obviousness inquiries – an examiner, three years out of college and acting alone, or dedicated groups of grad students and Ph.D’s at Stanford, Princeton, or a major state university? Nolo contendre. Government grant money funds all sorts of significant research and development, why not grant money for patentability studies. Those groups will be incentivized to operate with a high level of acumen, and to keep their program under grant. Government-employed examiners just work for that check and to add that line to their resume.
Patent Term Adjustments. Delays in patent examination always have been a gripe. A year or more for a first office action, then if you amend six to nine months for a second action, and if you don’t amend then possibly a year or more to appeal a final rejection. The last reform, by statute, adds on time for certain delays in the examination process. If anything, granting such extensions arguably put an imprimatur on delays, and did nothing to speed things along. Again, more money for examiners was the age-old suggestion. My second proposal is shorter patent terms, at the inventor’s option, at less cost and for faster examination. The invention may have a short shelf life, and so, getting a patent faster but for a shorter term of exclusivity may be attractive to some applicants. Shorter terms put more inventions into the public domain faster too. If my invention improves a method or product, today, then doubtlessly, a further improvement will be developed within a few years. Final action and issuance after one year, with exclusivity for four years, would protect and keep pace with five-year technologies.
Maintenance Fees. Once there was a rationale for maintenance fees, but now those are just patent taxes. On another tact, can anyone have a real affection for “paper patents.” Proposal #3 is to make patent protection more like trademark protection – you lose your patent rights unless your invention continues being used in interstate commerce. After five years, the patentee must file an affidavit of substantial use in IC, or the patent is extinguished. Maintenance fees would become due with an affidavit similar to Section 8. You would pay once, after half the term of the patent, and that fee keeps the patent in force for the remainder of the full term. That fee would not be small, and the actual use requirement would be substantial.
Inequitable conduct. This defense can be a blight on honestly-obtained patents, but is a needed deterrent against `gaming’ the examination process. Proposal #4 is to legislate standards for district courts to deal with the defense. A statute of limitations on the defense would give repose to patentees, and a limitations period would dovetail nicely with a post-grant opposition procedure. Next, impose a heightened pleading requirement on allegations of inequitable conduct, and enable district courts to strike the defense unless the uncited art is proven material early on, and to require that intent cannot be pleaded “upon information and belief.”
Patentable subject matter. Perhaps a good starting point for reforming the Patent Act would be to delineate what is patentable subject matter, and for those areas, e.g., business methods or tax avoidance schemes, the statute would set out what specifically might be, and what may not be patented.
That’s enough of being King for A Day. I have to get back to prosecuting and litigating patents with the practices that date back to 1952, or earlier.