Kappos says: "We publish patent applications, but then limit feedback that can be provided to the USPTO by experts from the public." Rule 1.99 allows third parties to send in prior art during the patent examination. The "limit" is a time limit (two months), not a limit on the ability to give feedback.
Kappos says: "For example, patent award damages are often ratcheted up if the courts find the infringer to have intentionally ignored existing patent protections. So the system actually rewards those who haven't checked to see whether a patent already exists." Think about what Kappos said in those two sentences.
Kappos follows with: "Rules that lead companies to place blinders on their developers is a startling sign that patent law has lost touch with the concept of teaching the public about new inventions, which is, after all, the reason for granting patents." Kappos does not mention that patent infringement itself is strict liability. If you infringe, you will lose the case whether or not you knew about the patent.
Kappos writes: "the U.S. gives precedence to those who are first to invent, but not necessarily the first to file a patent application. That opens the door to disputes between a patent holder and a party that can argue it came up with the idea first—even if it hasn't yet applied for a patent." IPBiz notes there are no patent interferences involving a party who has not applied for a patent.
Kappos mentions IBM's role in peer-to-patent: "While the USPTO is dependent on Congress to establish the patent laws, it has already started making internal improvements. This spring it is experimenting with a program that will enable expert volunteers, including those from IBM, to provide feedback to patent examiners on selected patent applications. Better and more efficient patent examination will improve patent quality by reducing the issuance of overbroad patents." [IPBiz notes some of the patent applications are from IBM.]
Kappos continues: "By bringing 21st-century knowhow to a 200-year-old institution, the USPTO is performing a classic arbitrage: pairing those who have expertise, motivation, and access to information with those who need it but lack the resources to generate it." Kappos does not mention that this will allow competitors to review unfavorably patent applications they might deem threatening.
Of business method patents, Kappos does not swear them off: "For example, when IBM, the top holder of U.S. patents, seeks patents for business methods, it aims to do so only for those methods underpinned by deep technical content. Pure business methods can be difficult to examine and tempt some to seek patents of questionable merit."
The "patent troll" issue morphs into "patent pawn shops."
Kappos suggests that there are many patents of low technical quality:
"IBM also is encouraging other patent practitioners to follow its lead with a sort of voluntary, corporate Hippocratic Oath that would institutionalize innovation-friendly patenting behavior. For instance, if more companies focused on ideas of higher technical quality, were transparent about which patents they owned or were applying for, helped review public patent filings, and permitted others to comment on their own pending patents, the likelihood of legal controversy would be reduced."
Separately, of the "review by third parties" aspect, some people might find it interesting to review the purported relevance of the paper "Development of Advanced Hitachi Electronic Patent Application System Toward a New Patent Age of Improved Support for the Operation of an Intellectual Property Department" (Yukihiko Takada and Kiyonobu Matsumoto, 74 JPTOS 315 (1992)) to the claims of the patent discussed by Jaffe and Lerner in Innovation and Its Discontents. There are a lot of things that might appear to be relevant to patent examination that are not relevant at all.
Specifically, let's go to text in Innovation and Its Discontents:
At page 144:
Consider Patent No. 6,049,811, which is for a “Machine for Drafting a Patent Application and Process for Doing So.” Describes a computer that poses a series of questions to a potential patentee, asking him to describe his invention. The application for this patent cited as relevant prior art just one other patent and two published articles.
Greg Aharonian pointed out, a line of research at Hitachi anticipated this event by many years (165)
In 1992 JPTOS published an article by two of the managers of Hitachi ’s Intellectual Property Division, describing in detail their development of a new system to automate the patent application process (166). Apparently the examiner also missed this publication in his search of prior art. [74 JPTOS 315-334 (1992)]
The book Innovation and Its Discontents has been reviewed by a number of intellectual property law professors. None have commented on this example, which in fact is central to the allegation that the USPTO is missing key references in examining patents.
The first claim of US 6,049,811 states:
A machine for drafting a patent application having at least sections including claims, a summary of the invention, an abstract of the disclosure, and a detailed description of a preferred embodiment of the invention, said machine comprising:
one or more input devices, one or more output devices, and a computer with memory for receiving and storing data from the input devices, transmitting data to the output devices, and storing program steps for program control and manipulating data in memory;
the computer, through input and output devices, requests and stores primary elements (PE) of the invention that define the invention apart from prior technology before the claims are drafted;
the claims are drafted before the summary of the invention, abstract, and the detailed description of a preferred embodiment of the invention is drafted; and
the computer requires drafting the sections in a predetermined order prohibiting jumping ahead to draft a latter section.
Without commenting on whether this claim is valid, the pertinent question is whether 74 JPTOS 315 anticipates the claim.
One gets a hint that 74 JPTOS 315 is about something entirely different than the '811 patent at page 320: which states "The distributed patent offices convert the application documents and specifications (prepared on word processors) to electronic application format." One also has the text: "Each patent specialist is furnished with a word processor unit for the preparation of patent specifications." If one looks at the figure on page 321, one finds a cartoonish image captioned "inut to computer of inventor's manuscript." Another cartoonish image is captioned "order a prior art search." Another cartoonish image shows "break up of invention" which has pictures of people at a conference table. Another cartoonish image has "evaluation" with one man sitting at a table with papers (no computer).
At page 322, one sees that the JPTOS document does NOT teach the elements of the '811 patent. The JPTOS article states the first step in processing the application is the preparation of a patent application manuscript by the inventor. There is NO teaching of a sequence of "claims before summary of invention," etc. The "advance" disclosed in the JPTOS article is that "the inventor prepares the patent specification manuscript on a word processor." Of course, the inventor has already written down everything (in no particular sequence) on paper, as Figure 5, on page 321 shows. There is NO TEACHING in the JPTOS article of what is in claim 1 of the '811 patent.
The episode on page 144 of Innovation and Its Discontents illustrates a number of things:
#1. Jaffe and Lerner seem to be uninformed about the meaning of prior art. To paraphrase Emerson, the more they talked about the failures to find prior art, the more I wanted to check the prior art they said was unfound.
#2. The statement by Jaffe and Lerner, "Apparently the examiner also missed this publication in his search of prior art," is entirely irrelevant. The examiner was totally correct in not citing a reference that had nothing to do with the claims.
#3. If Jaffe and Lerner, who supposedly know something about patents, as well as all the intellectual property professors who reviewed this book, spent a lot of time on this but missed a rather fundamental mistake, what's going to happen when people of LESS SKILL in patents and LESS TIME to study a matter are unleashed in the peer-to-patent program?
#4. What is one supposed to make of Kappos' statement: "By bringing 21st-century knowhow to a 200-year-old institution, the USPTO is performing a classic arbitrage: pairing those who have expertise, motivation, and access to information with those who need it but lack the resources to generate it." In Innovation and Its Discontents one had the 21st century expertise, motivation and access to information of numerous professors to a rather simple example of the application of prior art to a patent claim, and look at the result.