Boston Herald and patent reform
The following commentary was submitted to the Boston Herald, related to an article by Donna Meuth and Shann Kerner:
As introduced, both HR 1908 and S 1145 had two windows of post-grant review (opposition). Although HR 1908 now has only one window, it separately enhanced procedures as to inter partes re-examination, which effectively becomes the second window.
Although post-grant review is to address the "patent quality" issue, basic principles of quality suggest that one should improve examination rather than add an inspection step, such as post-grant review, if there is indeed a lack of quality in patents. Curiously, the National Academy of Sciences [NAS/STEP] report did not acknowledge that there was evidence of a pervasive patent quality problem.
Lawrence B. Ebert
****
The Herald had written:
One proposed reform involves the institution of a post-grant review proceeding.
Under the current law, an issued patent may only be challenged via litigation or a reexamination. Based on the perception of low patent quality, Congress has proposed an administrative post-grant review proceeding to challenge the validity of issued patents. (...)
****UPDATE
David B. Woycechowsky makes a comment below about the quality angle. As not appreciated by Mr. Goel, the USPTO rules (1.99) already allow for third parties to present prior art during prosecution. The most efficient path is for the examiner to acquire relevant prior art during the prosecution.
Post-grant review adds depositions by experts to the mix, a costly procedure in which each side is forced to spend money to defuse the opinions of opposing hired guns. It should be enough that the examiner judge prior art without input from biased entities. At the margins, depositions are not cost effective, and the post-grant opposition procedure adds uncertainty.
****UPDATE2
Of David's second comment, declarations in re-examination evoke to me the silly arguments made by FTCR and PubPat in the re-examinations of three WARF patents in the embryonic stem cell area. Two of the declarants opposing WARF / Thomson say Thomson's claims are obvious IN SPITE OF THE FACT that they submitted claims BROADER than those of Thomson in their own patent applications. Do we need to have examiners at the USPTO listen to this inconsistent claptrap?
We certainly need examiners who can understand the art and who have access to the published literature. We don't need to waste their time having to listen to polemics of hired guns. Judges may need this stuff because they don't know the art (witness the earlier atomic number confusion and the recent rigid foam bafflement), but we don't want examiners who are so out-of-it that they need education by advocates. That will get us the format of patent reform 2007 wherein the slickest lobbyist wins.
As introduced, both HR 1908 and S 1145 had two windows of post-grant review (opposition). Although HR 1908 now has only one window, it separately enhanced procedures as to inter partes re-examination, which effectively becomes the second window.
Although post-grant review is to address the "patent quality" issue, basic principles of quality suggest that one should improve examination rather than add an inspection step, such as post-grant review, if there is indeed a lack of quality in patents. Curiously, the National Academy of Sciences [NAS/STEP] report did not acknowledge that there was evidence of a pervasive patent quality problem.
Lawrence B. Ebert
****
The Herald had written:
One proposed reform involves the institution of a post-grant review proceeding.
Under the current law, an issued patent may only be challenged via litigation or a reexamination. Based on the perception of low patent quality, Congress has proposed an administrative post-grant review proceeding to challenge the validity of issued patents. (...)
****UPDATE
David B. Woycechowsky makes a comment below about the quality angle. As not appreciated by Mr. Goel, the USPTO rules (1.99) already allow for third parties to present prior art during prosecution. The most efficient path is for the examiner to acquire relevant prior art during the prosecution.
Post-grant review adds depositions by experts to the mix, a costly procedure in which each side is forced to spend money to defuse the opinions of opposing hired guns. It should be enough that the examiner judge prior art without input from biased entities. At the margins, depositions are not cost effective, and the post-grant opposition procedure adds uncertainty.
****UPDATE2
Of David's second comment, declarations in re-examination evoke to me the silly arguments made by FTCR and PubPat in the re-examinations of three WARF patents in the embryonic stem cell area. Two of the declarants opposing WARF / Thomson say Thomson's claims are obvious IN SPITE OF THE FACT that they submitted claims BROADER than those of Thomson in their own patent applications. Do we need to have examiners at the USPTO listen to this inconsistent claptrap?
We certainly need examiners who can understand the art and who have access to the published literature. We don't need to waste their time having to listen to polemics of hired guns. Judges may need this stuff because they don't know the art (witness the earlier atomic number confusion and the recent rigid foam bafflement), but we don't want examiners who are so out-of-it that they need education by advocates. That will get us the format of patent reform 2007 wherein the slickest lobbyist wins.
posted by Lawrence B. Ebert at 5:01 AM
3 Comments:
basic principles of quality suggest that one should improve examination rather than add an inspection step
I think the idea is that they are increasing the adversarialness of review as a way of enhancing quality. They also seem to be moving some review back in time, perhaps to catch more contemporaneous art, and/or perhaps to make sure that resources are focussed on applications/patents that have real economic consequences in the market.
Now, this may or may not be the best way to improve the patent system, but I think the optimization of the process goes beyond consideration of "basic principles of quality."
It should be enough that the examiner judge prior art without input from biased entities.
If this is taken srsly, then we should probably get rid of inventor declarations, examiner interviews with people with technical expertise and the like in ex parte examination, where the "expert" opinion on technology is even more more damaging precisely because it cannot be countered.
As a policy matter, I have always been more inclined to minimize early, ex parte patentability determination in favor of later, inter partes determination. Mostly because a lot of effort is wasted on stuff the market doesn't end up caring about, but also because the ex parte systemic nature of early examination does not lead the patent customer market to demand the best, most intelligent, most rational examiners possible. We just want our patents (and please don't raise the fees too much)!
That said, late, inter partes "examination" of the type I favor should be even-handed, efficient and not merely be duplicative of litigations and/or ITC proceedings. Under these guiding imperatives, I could see getting rid of the expert testimony at the PTO, so long as it doesn't mean going back to 1980s style re-exam, which was emphatically not even-handed (in that it favored the patentee).
declarations in re-examination
Still not as bad as a telephonic interview with an interested witness during primary ex parte exam. Nor nearly as frequent.
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