Gold-plating of patents: Obama's bad AND recycled idea
One of Barack Obama's ideas is the gold-plating of patents. This is not a new idea. In an IPBiz post in the year 2005, titled Antiquated U.S. patent justice system thwarts innovators?, gold-plating was discussed. IPBiz also discussed the idea in
Gold-plating patents: been there, proposed that....
In the initial article in Regulation, Lemley et al. started with a bad premise
Bad patents are everywhere: cov-
ering obvious inventions like the crustless
peanut butter and jelly sandwich, ridiculous
ideas like a method of exercising a cat with
a laser pointer, and impossible concepts like traveling faster
than the speed of light. More troubling, countless patents
that seem reasonable to a lay audience overreach in technical
fields as blatantly as that peanut butter sandwich overreach-
es in a familiar one.
At the time, Lemley was confused about the patent grant rate argument, and
had incorrectly adopted the Quillen/Webster numbers. He changed his mind in
the later "rubber stamp" paper, but unfortunately continued to carry some of the
accompanying false intellectual baggage.
Gold-plating was the second part of a proposal:
Second, because legitimate inventors need as much cer-
tainty as the law can give them, we would give applicants the
option of earning a presumption of validity by paying for a
thorough examination of their inventions. Put differently,
applicants should be allowed to “gold-plate” their patents by
paying for the kind of searching review that would merit a
presumption of validity. An applicant who chooses not to pay
could still get a patent. That patent, however, would be subject
to serious—maybe even de novo—review in the event of litiga-
tion.
Lemley further discussed (re-cycled?) the idea in Rethinking Patent Law's Presumption of Validity, 60 Stan. L. Rev. 45 (Oct. 2007).
And, then, in November 2007, TechWeb reported:
Obama promised to give the U.S. Patent and Trademark Office resources to improve patent quality and open the application process to citizen review. He proposed having the USPTO offer applicants "who know they have significant inventions the option of a rigorous and public peer review that would produce a "gold-plated" patent much less vulnerable to court challenge."
Obama, a former law professor, was recycling a shop-worn law professor argument, which rested on a misconception of the patent grant rate and further on a misconception of what the patent system is about.
***
Concerning the text in zoobab's comment And if you create an incentive to challenge patents and put some burden on the claimants, they would we much more careful in writing the claims they currently write. -->
No need to "create an incentive," it's already there; see In re Swanson on re-examination. Separately, as to "burden," note the current rejection rates at the USPTO. Obama's response is to a problem that's mostly gone, accentuated by the fact that the people giving Obama advice are not in touch with current events in the patent world, and haven't been for years. Lemley could not even accurately read Clarke's paper, and Jaffe/Lerner could not even figure out Clarke's first name, or spell Dreyfuss's last name. The magnitude of Jaffe/Lerner's mistake on Qualcomm is out-of-sight. Out-of-touch, out-of-touch, out-of-touch ...
***Further-->
On 14 November 2007, Techweb noted that Barack Obama had unveiled a nine page technology policy plan. Techweb stated Obama proposed having the USPTO offer applicants "who know they have significant inventions the option of a rigorous and public peer review that would produce a ‘gold-plated’ patent much less vulnerable to court challenge.”
The portion on patent reform is the last entry within the Obama technology policy plan and states:
Reform the Patent System: A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources
to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. With better informational resources, the Patent and Trademark Office could offer patent applicants who know they have significant inventions the option of a rigorous and public peer review that would produce a "gold-plated" patent much less vulnerable to
court challenge. Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.
[http://obama.3cdn.net/780e0e91ccb6cdbf6e_6udymvin7.pdf]
In this version, the Obama plan calls for an option of a rigorous AND public peer review that would produce a "gold-plated" patent. This author has already commented on IPFrontline about a downside of “public peer review.” [Inadvertent Argument Against Peer-to-Patent (June 28, 2007)]
Of the idea of an enhanced examination, one notes the terminology of a gold-plated patent did not originate with the Obama policy plan in November 2007. Two years earlier, in an article titled “What to do about bad patents?” [28 Regulation 10 (Deeember 22, 2005)], law professor authors Mark Lemley, Doug Lichtman, and Bhaven Sampat wrote:
because legitimate inventors need as much certainty as the law can give them, we would give applicants the option of earning a presumption of validity by paying for a thorough examination of their inventions. Put differently, applicants should be allowed to "gold-plate" their patents by paying for the kind of searching review that would merit a presumption of validity. An applicant who chooses not to pay could still get a patent. That patent, however, would be subject to serious--maybe even de novo--review in the event of litigation.
The 2005 proposal did not explicitly mention peer review, but did mention a post-grant opposition system, a process by which parties other than the applicant would have the opportunity to request and fund a thorough examination of a recently issued patent.
There are several problems with the gold-plating proposal, both as initially suggested in 2005 and as recycled in 2007.
First, it is based on a misunderstanding of the primary purpose of the patent system. The patent system is about disclosure of information about inventions. As pointed out on
IPFrontline: Scientific progress can be promoted by the disclosure of useful, novel, and nonobvious things which are not of commercial value. However, merely because an invention is not commercially successful does not mean one should build a repository of information of things which are not useful or not novel or are obvious. If, hypothetically, there were inadequate patent examination, the proper remedy is to improve examination, so that the nation’s database of invention information remains of high quality. Our first order of business is to optimize the information that directly benefits the public, not tweak relative advantage between two litigating parties.
Second, it is based on a misunderstanding of the analysis of patent grant rate data. Although in 2004, Lemley accepted the (inflated) Quillen/Webster numbers as the best evidence we had, this is no longer the case. See the discussion on IPFrontline: Patent grant rate lower than many academics think
Third, it ignores procedural mechanisms already in place. Patents can be challenged through the mechanism of re-examination, in which the evidentiary standard is preponderance of the evidence. In the recent case of In re Swanson, the Federal Circuit forcefully reminded us that re-examinations are alive and well, and distinct from litigation. Further, under 37 CFR 1.99, members of the public can submit relevant prior art to the USPTO.
In summary, the gold-plating proposal did not arise with Barack Obama. It did come from law professors and it is not a particularly good idea.
The Obama technology plan also addresses immigration issues:
Barack Obama supports comprehensive immigration reform that includes improvement in our visa programs, including our legal permanent resident visa programs and temporary programs including the H-1B program, to attract some of the world’s most talented people to America. We should allow immigrants who earn their degrees in the U.S. to stay, work, and become Americans over time. And we should examine our ability to increase the number of permanent visas we issue to foreign skilled workers. Obama will work to ensure immigrant workers are less dependent on their employers for their right to stay in the country and wemployers who abuse the system and their workers.
See also the article Why Can't We Make U.S. Grads U.S. Citizens? by Chloe Albanesius which appeared in PC Magazine: “An immigration system that allows foreign students to earn advanced math and science degrees at U.S. universities but refuses to let them work in the country after graduation is counterproductive and will serve only to advance the current innovation brain drain.”
Because Alan Hale’s fifteen minutes of fame are apparently over, this author would like to point out that there are two sides to the immigration story. While not wishing to deny non-citizens opportunities, this author points out that there are examples in which the system is gamed to deny qualified citizens jobs.
As discussed in Intellectual Property Today, this author had some experience with favoritism shown to non-citizen technical workers:
Through a post on the internet [www.oalj.dol.gov/public/ina/decsn/1987_00615.ina.pdf], I became aware on March 2, 2001 of a Department of Labor/Board of Alien Labor Certification case in 1987 peripherally involving me. The case for denying employer's application for alien labor certification is far stronger than indicated, because of omission of numerous facts.
[see “You can’t know it when you can’t see it,” p. 22, IPT (April 2001)]
In that particular case, a large U.S. corporation had terminated 50% of its scientists in its basic research laboratory, but denied several of them the opportunity to compete with a foreign worker for a single position in one of its applied laboratories.
Gold-plating patents: been there, proposed that....
In the initial article in Regulation, Lemley et al. started with a bad premise
Bad patents are everywhere: cov-
ering obvious inventions like the crustless
peanut butter and jelly sandwich, ridiculous
ideas like a method of exercising a cat with
a laser pointer, and impossible concepts like traveling faster
than the speed of light. More troubling, countless patents
that seem reasonable to a lay audience overreach in technical
fields as blatantly as that peanut butter sandwich overreach-
es in a familiar one.
At the time, Lemley was confused about the patent grant rate argument, and
had incorrectly adopted the Quillen/Webster numbers. He changed his mind in
the later "rubber stamp" paper, but unfortunately continued to carry some of the
accompanying false intellectual baggage.
Gold-plating was the second part of a proposal:
Second, because legitimate inventors need as much cer-
tainty as the law can give them, we would give applicants the
option of earning a presumption of validity by paying for a
thorough examination of their inventions. Put differently,
applicants should be allowed to “gold-plate” their patents by
paying for the kind of searching review that would merit a
presumption of validity. An applicant who chooses not to pay
could still get a patent. That patent, however, would be subject
to serious—maybe even de novo—review in the event of litiga-
tion.
Lemley further discussed (re-cycled?) the idea in Rethinking Patent Law's Presumption of Validity, 60 Stan. L. Rev. 45 (Oct. 2007).
And, then, in November 2007, TechWeb reported:
Obama promised to give the U.S. Patent and Trademark Office resources to improve patent quality and open the application process to citizen review. He proposed having the USPTO offer applicants "who know they have significant inventions the option of a rigorous and public peer review that would produce a "gold-plated" patent much less vulnerable to court challenge."
Obama, a former law professor, was recycling a shop-worn law professor argument, which rested on a misconception of the patent grant rate and further on a misconception of what the patent system is about.
***
Concerning the text in zoobab's comment And if you create an incentive to challenge patents and put some burden on the claimants, they would we much more careful in writing the claims they currently write. -->
No need to "create an incentive," it's already there; see In re Swanson on re-examination. Separately, as to "burden," note the current rejection rates at the USPTO. Obama's response is to a problem that's mostly gone, accentuated by the fact that the people giving Obama advice are not in touch with current events in the patent world, and haven't been for years. Lemley could not even accurately read Clarke's paper, and Jaffe/Lerner could not even figure out Clarke's first name, or spell Dreyfuss's last name. The magnitude of Jaffe/Lerner's mistake on Qualcomm is out-of-sight. Out-of-touch, out-of-touch, out-of-touch ...
***Further-->
On 14 November 2007, Techweb noted that Barack Obama had unveiled a nine page technology policy plan. Techweb stated Obama proposed having the USPTO offer applicants "who know they have significant inventions the option of a rigorous and public peer review that would produce a ‘gold-plated’ patent much less vulnerable to court challenge.”
The portion on patent reform is the last entry within the Obama technology policy plan and states:
Reform the Patent System: A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources
to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. With better informational resources, the Patent and Trademark Office could offer patent applicants who know they have significant inventions the option of a rigorous and public peer review that would produce a "gold-plated" patent much less vulnerable to
court challenge. Where dubious patents are being asserted, the PTO could conduct low-cost, timely administrative proceedings to determine patent validity. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.
[http://obama.3cdn.net/780e0e91ccb6cdbf6e_6udymvin7.pdf]
In this version, the Obama plan calls for an option of a rigorous AND public peer review that would produce a "gold-plated" patent. This author has already commented on IPFrontline about a downside of “public peer review.” [Inadvertent Argument Against Peer-to-Patent (June 28, 2007)]
Of the idea of an enhanced examination, one notes the terminology of a gold-plated patent did not originate with the Obama policy plan in November 2007. Two years earlier, in an article titled “What to do about bad patents?” [28 Regulation 10 (Deeember 22, 2005)], law professor authors Mark Lemley, Doug Lichtman, and Bhaven Sampat wrote:
because legitimate inventors need as much certainty as the law can give them, we would give applicants the option of earning a presumption of validity by paying for a thorough examination of their inventions. Put differently, applicants should be allowed to "gold-plate" their patents by paying for the kind of searching review that would merit a presumption of validity. An applicant who chooses not to pay could still get a patent. That patent, however, would be subject to serious--maybe even de novo--review in the event of litigation.
The 2005 proposal did not explicitly mention peer review, but did mention a post-grant opposition system, a process by which parties other than the applicant would have the opportunity to request and fund a thorough examination of a recently issued patent.
There are several problems with the gold-plating proposal, both as initially suggested in 2005 and as recycled in 2007.
First, it is based on a misunderstanding of the primary purpose of the patent system. The patent system is about disclosure of information about inventions. As pointed out on
IPFrontline: Scientific progress can be promoted by the disclosure of useful, novel, and nonobvious things which are not of commercial value. However, merely because an invention is not commercially successful does not mean one should build a repository of information of things which are not useful or not novel or are obvious. If, hypothetically, there were inadequate patent examination, the proper remedy is to improve examination, so that the nation’s database of invention information remains of high quality. Our first order of business is to optimize the information that directly benefits the public, not tweak relative advantage between two litigating parties.
Second, it is based on a misunderstanding of the analysis of patent grant rate data. Although in 2004, Lemley accepted the (inflated) Quillen/Webster numbers as the best evidence we had, this is no longer the case. See the discussion on IPFrontline: Patent grant rate lower than many academics think
Third, it ignores procedural mechanisms already in place. Patents can be challenged through the mechanism of re-examination, in which the evidentiary standard is preponderance of the evidence. In the recent case of In re Swanson, the Federal Circuit forcefully reminded us that re-examinations are alive and well, and distinct from litigation. Further, under 37 CFR 1.99, members of the public can submit relevant prior art to the USPTO.
In summary, the gold-plating proposal did not arise with Barack Obama. It did come from law professors and it is not a particularly good idea.
The Obama technology plan also addresses immigration issues:
Barack Obama supports comprehensive immigration reform that includes improvement in our visa programs, including our legal permanent resident visa programs and temporary programs including the H-1B program, to attract some of the world’s most talented people to America. We should allow immigrants who earn their degrees in the U.S. to stay, work, and become Americans over time. And we should examine our ability to increase the number of permanent visas we issue to foreign skilled workers. Obama will work to ensure immigrant workers are less dependent on their employers for their right to stay in the country and wemployers who abuse the system and their workers.
See also the article Why Can't We Make U.S. Grads U.S. Citizens? by Chloe Albanesius which appeared in PC Magazine: “An immigration system that allows foreign students to earn advanced math and science degrees at U.S. universities but refuses to let them work in the country after graduation is counterproductive and will serve only to advance the current innovation brain drain.”
Because Alan Hale’s fifteen minutes of fame are apparently over, this author would like to point out that there are two sides to the immigration story. While not wishing to deny non-citizens opportunities, this author points out that there are examples in which the system is gamed to deny qualified citizens jobs.
As discussed in Intellectual Property Today, this author had some experience with favoritism shown to non-citizen technical workers:
Through a post on the internet [www.oalj.dol.gov/public/ina/decsn/1987_00615.ina.pdf], I became aware on March 2, 2001 of a Department of Labor/Board of Alien Labor Certification case in 1987 peripherally involving me. The case for denying employer's application for alien labor certification is far stronger than indicated, because of omission of numerous facts.
[see “You can’t know it when you can’t see it,” p. 22, IPT (April 2001)]
In that particular case, a large U.S. corporation had terminated 50% of its scientists in its basic research laboratory, but denied several of them the opportunity to compete with a foreign worker for a single position in one of its applied laboratories.
posted by Lawrence B. Ebert at 4:53 AM
1 Comments:
"Patent law" is what the legislator decides.
If tomorrow the "legislator" decides patent examination should be privatised, that would probably provide a better quality output.
And if you create an incentive to challenge patents and put some burden on the claimants, they would we much more careful in writing the claims they currently write.
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