What To Do About Bad Patents” under Briefly Noted by Profs. Lemley, Lichtman and Sampat (the Profs.) bemoans today’s patents, and then asks whether past problems provide a formula for new solutions.

In their equation, opposing values are placed on either side of the equal sign. (If not for our talent of scaling justice, and equating one side to the other, then what use are we lawyers). Balance first an Under-budgeted Examining Corps against a Patent Office that over-budgeting cannot cure. Equate then, as a negative and positive, the Statutory Presumption of Validity with a presumption that the statutory examination of 21st Century inventions results in invalid and useless patents. Counterweight next that, most patents are worthless to the economy, but that a lot of unworthy inventions can kill commerce in a new economy.

What the Profs. describe, however, does not balance the equation in favor of either set of factors, nor lead to the conclusions that they promote. It does makes sense to say that the patent system, including both applicants’ counsel and the examiners, needs to be driven in new directions. While that will not be free of costs, it is correct to say that piling money will not of itself improve the PTO (a new computers won’t make you smarter/better). Next, useless patents impose no novel or unique threat to the system or the economy, and so, keep considering them useless. If I can patent an invention comprising drinking straws in combination with nostrils, then, yawn.

Apart from that, I see things differently than the Profs. The presumption of validity is statutory, so give it some reverence. The presumption should be immutable, with its exceptions, or it just should be eliminated (to paraphrase the Profs., it’s either “gold” or “wooden”). To have a sliding scale presumption eliminates it, or, that sliding feature will work as well as the $9.95 slider-ring computer for your wristwatch. It’s moveable, but you never sure how far it goes. Next, the folks in our examining corps are smart and well supervised, so why cast them as willing/able only to churn out piece-work quality on a budget.

They deserve a lot of love too, what with having to deal with pricey cagey patent lawyers all day. Imagine that you are a young engineer, put in the cross-hairs of some huge firm of patent attorneys, arguing over whether some lame reference they cited, when combined with what you found, renders some dependent claim obvious – and do it 9 times every day with 55 minutes for lunch. Then, having granted allowance to those counsel and clients, they go off to their club with IP in the title, where they complain about the sorry state of the examining corps. But, more importantly, whether the Patent Office has been persuaded, in the past, to grant patents on the building blocks of some web browser, concerns the past and problems that may suggests no future plan. It can be too late to worry about some things in the past. Those patents were granted, are presumed valid, and now, only a court of law might “identify” those as “important” in terms of their validity and scope.

Overall, I do not find the causes or afflictions that the Profs. list, to be causative of future concerns or weighty measures of any solution. Those factors are contradistinct in the article. Money won’t solve “the problem,” problems put an “implicit tax on consumers,” but charging willing applicants more, to “gold plate” their patents, promotes “important” patents, and to do otherwise enables granting non-useless patents on “now-familiar concepts” which may render those “economically significant,” thereby “thwarting truly innovative” second-comers. [Apology for, without good grounds, disassembling the Profs. plainer points]. That being said, the Profs. embraced many timely views and reflections on the patent system, but to find a clear new direction for the patent industry may require foresight, not retrospect.

Go then to the Profs. most creditable conclusion of giving the Patent Office the “information” needed to truly examine patents. Try to reverse engineer from that a means to provide the information needed to improve the patent system. Take as a comparable, case differentiation in the courts. If an applicant does not provide three references that he avers are the closest prior art of which he and his agents are aware, then the Patent Office could cause that application to get special review. Also warranting this review are claims around ‘system building’ blocks. Timely, detailed review would provoke a more in-depth (but not a longer) examination. Files sent for special review would require the applicant to prove that this “important” invention is patentable and is claimed explicitly, and could generally require greater submissions by the applicant. Let the Patent Office ‘gold-plate’ applications, instead of getting rich applicants to pay extra for a genu-wine “gold-plated” presumption of validity (and other indulgences).

Presently, applicants only have to deny invalidity, and do not have to prove anything, e.g., ‘neither reference A nor reference B teaches the combination of straws and nostrils.’ Instead of affirmation-by-denial, special review could make applicants show affirmatively that their invention is novel, or that a diligent search found no close references. Also, applicants too may need to state in the file wrapper that the invention has been claimed no more broadly than proper. Applicants could purchase special review too, and may desire that scrutiny, in exchange for outer time limits on that review. This differentiation would work, just like in court, where the simple case gets little supervision and requires basic submissions, and those complex cases with “important” issues are scheduled for additional time and added efforts.

Today’s post comes from Guest Barista C. Lee Thomason, a registered patent attorney and IP litigator at Frost Brown Todd’s Louisville office.

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