Sunday, September 11, 2005

Kelber on patent reform (HR 2795)

In an article on patent reform of about 2,400 words (Bill has issues all will debate; Scope and complexity of Patent Reform Act [HR 2795] reach all industry sectors; NLJ, Aug. 29), Steven B. Kelber did not mention fee diversion or how the new proposals will be funded.

The take was one of efficiency ["These reforms aim to eliminate subjective, discovery-laden issues and introduce greater certainty in the issuance of patents and their enforcement."] although the most controversial provision, on injunctions, has nothing to do with discovery-laden issues.

Although first-to-file is portrayed as an easy choice ["Surprisingly, there is little opposition and seemingly overwhelming support for the current first-inventor-to-file legislation. The reform will simplify the process of deciding who is entitled to a patent by limiting the need for priority contests."], Kelber makes no mention of the Apple/Microsoft/iPod saga, which showed that many people do not view first-to-file as equitable.

Although changes would be required to the definition of prior art in a first to file system, the proposed changes are not actually required. Thus, although Kelber says: For example, a new
definition of anticipatory prior art requires the cited information to be "reasonably and effectively accessible," the concept of reasonably and effectively accessible is not at all required by a change to a first to file system.

Of oppositions, Kelber writes: Opposition practice has received
general approval as a means for improving and controlling patent quality. Some debate focuses on whether, and under what circumstances, an opposition should be stayed or deferred if the patent owner elects to proceed with a claim for infringement
in district court.

One wonders if Kelber read the article by Joseph Hosteny, Post-Grant Opposition: Building on Sand, Intellectual Property Today [IPT], pp. 8-9 (August 2004), published a year before his NLJ article. Also, Joseph Hosteny, What Now? Post-Grant Oppositions and the Proposed Budget, IPT pp. 8-9 (March 2005). Even Cecil Quillen, who has raised patent quality issues, opposes the proposed opposition procedure. What does Kelber mean by "general approval"?

Similarly, of Kelber's suggestion that inspection is a viable way to improve quality, one recalls W. Edwards Deming's third point on quality: Cease dependence on inspection to achieve quality. Eliminate the need for inspection of a mass basis by building quality into the product in the first place.

Thus, the first effort in patent reform should be to stop fee diversion, give the PTO the resources it needs to examine patents, and build quality into the product in the first place.

A July 27 article in the Houston Chronicle contained the following:

Reporter Purva Patel spoke with patent attorney Jonathan P. Osha
about the proposal.

Q: Who will the reforms benefit?

A: We believe everybody will benefit. [!!!!!???]

Currently the system is quite inefficient in the United States
because there is so much litigation.

By making the system more predictable, we believe everyone will

Q: How will the reforms affect the global economy?

A: There's a lot of inefficiency globally in the patent system
because patent offices in all countries are duplicating their efforts instead of sharing information. The more we can harmonize these systems, the better off the global economy will be. The first to file versus the first to invent systems could be
analogized to driving on the right side of the road or the left side of the road. [!!!] Each system is fine by itself.

Because the economy has become more globalized, we've built more and more bridges where the left side of the road meets the right side of the road and it 's having a disastrous effect.

Changing our system to be like the rest of the world's, we believe, will make the world economy more efficient.

Q: Who are the main opponents?

A: There are some minor specific points that are highly contentious.
The primary opponents of the bill as a whole are the small inventors' groups. There is a fear, which is quite understandable, that the change will move the balance in favor of big companies and big interests. I believe, however, when you looked
at the picture as a whole, the bill actually presents a better balance for everyone.

Q: There's been talk about reform for 10 years. Do you think
Congress will make changes this year?

A: It's hard to predict. The amazing thing is there's an enormous
consensus in support of the principal objects of this patent reform bill.

The first being the change to the first-to-file system and the
second is the introduction of an opposition period, meaning a limited time within which the public can contest the patent. This patent reform will introduce an opposition period of nine months where any member of the public can say "Dear patent
office, you messed up and that patent shouldn't have been issued and
here's why." [Huh?] That makes sense because you don't have to go to court to prove that fact. That's in favor of the small inventors. [Say you're kidding]

Q: How would the reform affect patent attorneys, considering the
reforms are aimed at cutting down a lot of patent litigation?

A: Our ultimate goal is the best interest of our clients, and we
believe the best interests of our clients are served with a minimum of litigation.

There will always be some litigation, but minimizing litigation is in everyone's best interest. We hope this system is more accessible and more people will hire patent attorneys and file patent applications.


PromotetheProgress has the text:

The answer, of course, is politics and money. For a variety of reasons, fee diversion is the linchpin underlying the entire patent quality issue. While everyone will readily agree that the PTO plays an important role in our society, the appropriators won’t relinquish control of its prized cash cow. After all, fee diversion is a politician’s dream — a special tax on the inventors and innovators of our society that doesn’t have to be sold to the public as a tax.


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