Internetnews reported: Boucher and Rep. Howard Berman (D-Calif.) introduced the Patents Depend on Quality Act of 2006 [IPBiz ?, 2007] (PDQ Act). Boucher said hearings would begin this month, and he hoped for a full floor vote by March or April. The bill would clarify when a court can grant injunctive relief, require all patent applications be published within 18 months of filing, allow third parties to comment during the application process and establish administrative procedures for post grant reviews.
The previous bill included a section 2 (chapter 32) on opposition which required that an opposer oppose the issued patent not later than 9 months after the grant of the patent. [323, lines 15-17] The burden of proof for the opposer would be preponderance of the evidence. [332, lines 21-24]
The previous bill included a section 4 (which would amend section 131 of title 35) on submissions by third parties. The written submissions would have to be within 6 months of publication of the patent application OR before the date of notice of allowance, whichever occurs FIRST. [IPBiz notes within 6 months of publication is likely to occur first for most applications.] There is a fee for third party submission. A factor in determining "how much" of an improvement this provision is over current re-examination practice is "how much" the fee is.
Provisions such as these have been discussed before. In the context of reviewing Innovation and Its Discontents, Rochelle Dreyfuss wrote of similar proposals by Jaffe and Lerner.
Of third party submissions (denominated by Jaffe and Lerner as "pre-grant opposition"), Dreyfuss wrote: There is not, however, much that is new here: the PTO already has such a procedure, albeit of narrow scope. And even if submission practice is improved, this stage is not likely to have a dramatic impact on quality. The small possibility of stopping a patent "on the cheap" does not provide much incentive to study applications as they are published. 104 UMichigan Law Review at 1573. IPBiz notes that one could apply the comments of Dreyfuss to Peer-to-Patent review (refer to Beth Noveck, 20 Harvard Journal of Law and Technology (2006))
Of post-grant opposition, Dreyfuss wrote Postgrant reexamination allows challengers to formally argue for invalidiation. Jaffe and Lerner did not specify a standard of review or time period, which absence Dreyfuss criticized. The PDQ Act specifies preponderance and 9 months, which is intended to balance the interest of inventors in stable rights against the public's interest in detailed scrutiny of the patent.
Of the "patent quality" issue, Patently-O wrote:
We know from several studies as well as anecdotal evidence that plenty patents are issued covering obvious ideas. It is hard work to find and sift-through prior art — not to mention the difficult task of comparing it to a patentee’s claimed invention. Obvious patents make the patent system look bad and drag-down the system.
One commenter to Patently-O wrote of "peer to patent":
Bah! I think this is doomed to fail. People already have the ability to review and submit prior art (anonymously even) after a patent has been published.
This effort will lead to crap submissions. People who know technology/patents time is too valuable to spend "volunteering" as the mass volume of patents is too large almost even to comprehend. Killing a single patent isn't rewarding enough to get the volunteers.Another commenter suggested that "peer to patent" would help large companies at the expense of smaller ones:
In the end, this kind of a system will help the big boys, who can afford to hire people full time to monitor and shoot down little guy patent apps.
Another commenter pointed to the difficulty in utilizing prior art against patent claims:
I was at one of her presentations where she failed to address the paramount issue that would determine the success of this project -- claim interpretation.
A different commenter suggested the academics of intellectual property are simply "out of touch" with the real world of patent law:
Is it just me, or does it seem that there is a major disconnect between those in academia and those who actually interface with clients who sincerely believe they have come up with a better idea and would like to protect it if possible? IPBiz notes that when the Stanford Law Review proclaims Gary Boone the inventor of the integrated circuit, there is more than a disconnect between everyday practice and the academics.
In passing, note that the December 2006 issue of JPTOS contains: On Patent Quality and Patent Reform - Lawrence B. Ebert