Monday, December 27, 2004

Meetings on patent reform in 2005

In February and March 2005, the Federal Trade Commission (FTC), the National Academy of Science's (NAS) Board on Science, Technology, and Economic Policy (STEP), and the American Intellectual Property Law Association (AIPLA) will co-sponsor a three-part series of town meetings on patent reform. The first three meetings will take place in San Jose, California, on February 18, 2005; Chicago, Illinois, on March 4, 2005; and Boston, Massachusetts, on March 18, 2005.

In the last two years, there has been much discussion of patent reform.

-->In October 2003, the FTC released its report entitled, “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,” available at

-->In 2004, the NAS's STEP Board released its report entitled, “A Patent System for the 21st Century,” available at A draft had been issued earlier in 2004. Within the section on --seven recommended changes--, the NAS suggests modification or elimination of litigation concerning willful infringement, best mode, and inequitable conduct.

-->The AIPLA has issued detailed responses to both reports; they are available at

Representatives from the FTC, the National Academies’ STEP Board, and the AIPLA will conduct the meetings, describe the various recommendations for patent reform, and moderate the audience-participation sessions. The sessions will include substantive discussion of several reform proposals:

Best Practices: First Inventor to File, Publication, and Related Reforms;

Post-Grant Review;

Litigation Reform: Willfulness, Inequitable Conduct, and Best Mode; and

Shields to Infringement Liability: Prior User Rights and Experimental Use Exception.

The full agenda, including schedules and a list of speakers is available on the FTC’s Web site at

Relevant to both FTC and NAS reform proposals, I have published an article PATENT GRANT RATES AT THE UNITED STATES PATENT AND TRADEMARK OFFICE which appears in 4 CHI-K. J. INTELL. PROP. 108 (2004)available at The NAS report by Stephen A. Merrill, Richard C. Levin, and Mark B. Myers, A Patent System for the 21st Century, was available in draft form at

The final version of the NAS report does differ from the draft form that was available in April 2004.

For example, in the section on "seven criteria for evaluating the patent system"
one has the text: "Acceptance rates by themselves ignore how claims are modified, nearly always by narrowing their scope, in the course of examination, surely a key determinant of quality. Moreover, rigor of examination is only one of several factors that may affect allowance rates. The fact is that the examination procedure, allowing an applicant multiple attempts to persuade a critical examiner to approve a patent (see Appendix A) is designed to yield a high "success" rate, at least for persistent applicants."

This text does resemble the old Chinese birth/gender problem. If some Chinese families decide to continue to have children until they obtain a male child (analogous to obtaining an issued patent), this strategy does NOT alter the percentage of male children, which remains at whatever the birth probability was (approximately 50/50). A strategy of insisting on a male child does NOT alter the resultant gender distribution. Similarly, if the patent office continues to apply the same criteria to each application, the fact that some applicants keep trying to obtain an issued patent DOES NOT YIELD a higher "success" rate.

There is also an interesting allusion to the Wright Brothers in the NAS report: "The first patent on a flying machine was issued to the Wright Brothers within 30 months of the flight at Kitty Hawk, North Carolina." A few comments are in order. The first patent issued to the Wright Brothers was NOT on a flying machine; it was for a method of three-dimensional control of flight. The application was made BEFORE the powered flight at Kitty Hawk. That is, the Wrights filed an application on March 23, 1903, written by themselves, for what ultimately became US 821,393; the application does not discuss powered flight, engines, or propellors. The first successful powered flight of the Wrights was on December 17, 1903, approximately nine months AFTER the application was filed. Thus, the NAS report is somewhat misleading in suggesting that the application was granted in less than 30 months; it was not. The NAS report is also somewhat misleading in suggesting the Wright Brothers' patent was to a powered flying machine; it was not. The main problem of the Wright Brothers with the patent system came AFTER the patent was issued. [See also L. B. Ebert, Festo, Foreseeability and the Wright Brothers, Intellectual Property Today, February 2004.]


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