The court's [CAFC's] case law is the center of two recent reports, one by the Federal Trade Commission (FTC) and the other by National Research Council (NRC). 3
The problem with the recent reports and the current argumentation before the
Supreme Court in KSR is that none of the assertions being made are supported by
recent empirical data. 5 5 The reports and criticism are only based on the "feel"
of the case law 6
Footnote 5 of the Cotropia article treats the NAS/NRC report as an invitation for MORE work: The NRC's report explicitly notes that no empirical analysis of these claims has been done. See Nat'l Research Council, supra note 3, at 3 ("The claim that
quality has deteriorated in a broad and systematic way could be, but has not
been, empirically tested.").
William C. Rooklidge (88 JPTOS 9) mentions the NAS report in the following way:
The reform proposals regained significant momentum when they were recommended in reports of the Federal Trade Commission ("FTC") 5 and the National Academies of Sciences' Committee on Intellectual Property Rights in the Knowledge-Based Economy
("NAS"), 6 both of which concluded that the processes of obtaining and enforcing
patents cost too much and are too complex.
Footnote 6: Committee on Intellectual Property Rights in the Knowledge-Based Economy, Board on Science, Technology, and Economic Policy, Policy and Global Affairs
Division, National Research Council of the National Academies, A PATENT SYSTEM
FOR THE 21ST CENTURY (Stephen A. Merrill, Richard C. Levin & Mark B. Myers, eds.
Robert A. Armitage wrote in 5 J. Marshall Rev. Intell. Prop. L. 267:
An October, 2003 FTC report affirmed the need to maintain a strong patent system, but supported making radical reforms. 49 The same can be said of the National Academy of Sciences that issued a report a few months
later, following its several-year study of the patent system. 50
Footnote 50: See Bruce Alberts, President, Nat'l Acad. of Scis., Address at the Academy's 141st Annual Meeting: A World that Banks on Science (Apr. 19, 2004), available at http://www.nasonline.org/site/DocServer/2004address.pdf?docID=109.
IPBiz notes that the citation to the NAS report in footnote 50 amounts to a discussion of two sentences on page 4 of an address that is mainly NOT about intellectual property. It does indicate that the NAS report on IP issued on April 19, 2004. Note that page 133 of the NAS report cites Jaffe and Lerner's Innovation and Its Discontents [Jaffe, A. and J. Lerner. (2004). Innovation and Its Discontents: How Our Broken Patent System Is Endangering Innovation and Progress, and What to Do About It. Princeton, N.J.: Princeton University Press.]
[See also http://www.wto.org/english/forums_e/ngo_e/posp43_patent_system_e.pdf]
Note that Chisum writes (4 J. Marshall Rev. Intell. Prop. L. 336) that the NAS/STEP report was before the FTC report:
Reform gained significant momentum with the publication of two studies of the
patent system. The first was by a Committee of the National Academies. 2 The
second was by the Federal Trade Commission. 3 Both studies concluded that the
patent system served valuable public policies but currently suffered from
However, Chisum's footnotes do NOT support Chisum's text:
n2 COMM. ON INTELLECTUAL PROP. RIGHTS IN THE KNOWLEDGE-BASED ECONOMY, THE
NATIONAL ACADEMIES, A PATENT SYSTEM FOR THE 21ST CENTURY 119 (Stephen A. Merrill
et al. eds. 2004).
n3 Federal Trade Comm'n, To Promote Innovation: The Proper Balance of
Competition and Patent Law and Policy, ch. 5, at 31 (2003), available at
Of greater interest was Chisum's text:
I, for one, was skeptical that these types of studies would give enough "push"
to patent law reform to overcome the inertia. But another "force" has been added
to movement for patent law reform: that of substantial private interests and
companies. I will single out as an example, Microsoft, the software giant all of
us are so aware of. However, other private sector interests are at work on
patent law reform. Microsoft has run newspaper advertisements espousing in
general terms the need to reform the patent system. 6 Its executives -- not just
legal counsel -- have given speeches in the cause for patent law reform. 7 If it
sounds like I have singled Microsoft out for strong criticism; that is not my
intent. In fact, I am sympathetic toward some of Microsoft's problems with
patent system. My purpose is to use Microsoft's problems with the patent system
and its response as explicative of what we face with patent law reform.
Microsoft is in an interesting position. Historically, it was not much
interested in strong IP protection, perhaps because, as some believe, it
"lifted" much of its technology from others, such as Xerox and Apple. 8 But
certainly today it is heavily dependent on IP protection. Where would Microsoft
be without effective copyright protection for its software, such as the Windows
operating system? Historically, it showed little interest in patents. But just a
year or two ago, it announced that it was adopting an aggressive policy of
patenting its technology and licensing it. 9 It even hired the former chief
licensing executive of IBM. 10 So, Microsoft must favor strong IP protection.
However, the counterpoint is that Microsoft itself becomes a very big target for
patent licensing and infringement claims by others.
note on page ix of the NAS report:
Although self-initiated, the study as a whole or activities within it have attracted diverse support from government agencies, foundations, and corporations. The National Aeronautics and Space Administration sponsored the project as part of its program support of the Board on Science, Technology, and Economic Policy (STEP) from 1999 to 2003.
On page x of the report: Finally, the U.S. Patent and Trademark Office (USPTO) paid the salary of a senior patent examining supervisor who, under the Commerce Department’s Science and Technology Fellowship Program, worked full-time with the staff and committee from September 2000 through September 2001.