By Kevin E. Noonan —
The following is part of a continuing series on how to address the very real problems facing the U.S. Patent and Trademark Office.
A day after the day of rejoicing for inventors, patent practitioners,
examiners, and seemingly all of civilization, fair-minded people will
concede that the U.S. Patent and Trademark Office faces a daunting
task. After years of neglect – from Congress raiding the users’ fees,
an inadequate number of examiners, technology-driven increases in the
number of applications filed, and a "count" system that has not
rewarded a style of examination that encourages prosecution to a
definitive end point – the Office is facing a massive backlog of
applications without sufficient resources to process them in a timely
manner.
If the patent bar is gladdened by District Court Judge Cacheris’
decision enjoining implementation of the new rules – representing an
attempt, albeit a misguided one, on the part of the Office to address
the pendency and backlog problems – it behooves us to propose
alternatives. Patent Docs
will be posting a series of such proposals, and we invite our readers
to provide their own ideas. As they used to say in the days of the
counterculture, "if you are not part of the solution, you are part of
the problem." Patent Office management clearly thinks the patent bar
is part of the problem; it would be satisfying to prove them wrong.
Tailoring protection and examination to the needs of particular technologies
The Patent Office has applied the Patent Act uniformly to technologies having different needs for patent protection. For example, biotechnology and pharmaceuticals need strong patent protection that, maybe more importantly, lasts long enough for the patentee to recoup large development and regulatory compliance costs. Prosecution times (for a family of applications including continuations) must be sufficiently long for an applicant to have time to obtain the information necessary to determine which species of a (typically) large genus will be the commercial product. Although this strategy is consistent with the business needs of the biotech and pharma industries, Patent Office management (and some academic commentators) have used it to demonize these applicants, contending that they are not entitled to patent protection if they don’t "know" what their "invention" is when an application is filed. This view overlooks the public benefit of early disclosure of the broadest and most detailed specification, and seems rooted in another time when a patent term was fixed by patent grant date, rather than earliest filing date. Also echoed in these concerns are "submarine patent" issues which have largely disappeared because U.S. patents are published and prosecution of published patents is open to the public. The shenanigans facilitated in the past by such outdated practices have largely been eliminated by these earlier changes in U.S. patent law.
On the other hand, other technologies have very different patent needs, some of which have been either explicitly addressed by the Office or have formed the rationale for the ill-considered "new rules." These include the needs to rapid access to patent protection, requiring reduced pendency times and exacerbated by the current backlog. Arts affected by these considerations include software and the computer-related arts, where factors such as Moore’s Law result in rapid obsolescence times for these technologies. There are also significant differences between these arts and the biotech and pharma industries with regard to investment costs, and whereas different pharmaceutical companies can develop different compounds that have the same or equivalent biological activity (e.g., different statins or antibiotics) and thus provide distinctly-different paths for patent protection, information technology companies can encounter a "patent thicket" of different technologies protected by patentees who are individual inventors, or worse, companies who have acquired patents from individual inventors (the dreaded "trolls").
These differences are ill-served by a "one-size-fits-all" system of patent protection. One solution, suggested previously (see "Could Creating a U.S. ‘Utility Model’ Patent Fulfill the ‘Need’ for Patent Law Reform?"), is for an applicant to be able to opt for something akin to the utility model patent in Europe. Under this scheme, an applicant could choose examination limited to novelty, utility, and adequacy of disclosure, and the Office would forego examination based on obviousness. Such a petty-patent scheme would have a more limited term, anywhere from 5 to 10 years, with maintenance fees assessed according to a more frequent schedule (every one or two years). Examination of these patents would thus require less Patent Office resources and could incorporate other Office initiatives, such as accelerated examination and peer-to-patent prior art submissions (which would be more focused if obviousness is not a consideration). Limitations on remedies, such as precluding injunctive relief or providing for compulsory licensing, could also be adopted.
Limiting protection (at an applicant’s option) in return for accelerated examination and patent grant would provide these applicants with patent protection commensurate with their value. They would provide a means for protecting the type of incremental advances disparaged by the Supreme Court in KSR Int’l Co. v. Teleflex, Inc., advances of a kind that can make the difference in adapting older technologies to new developments by providing the appropriate modicum of protection to spur investment (considerations not addressed by the Supreme Court). Limited term would encourage patentees to permit technology to more rapidly fall into the public domain as it became less advantageous to the patentee, a long-standing goal of the patent system. And limitations on damages would ameliorate the "patent thicket" effects of independently patented, small variations, and improvements, while at the same time reducing the "litigation jackpot" incentive for companies to invest in patents solely for the purpose of suing the members of a high-tech industry.
For additional articles in the "Post-GSK" series, please see:
- "Annuities," November 1, 2007
Patent Docs 
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