Sunday, April 02, 2006

Another bad newspaper story on patents

An article by Mary Z. Connaughton is filled with errors and misimplications.

Some examples of errors:

However, the onus is on the patent applicant to act in good faith and disclose the existence of prior art to the USPTO. While it may be reasonable for a patent examiner to search for prior art for a tangible invention, diligently searching for prior art pertaining to process inventions is far more daunting a task. [IPBiz: An applicant is required to disclose what he already knows. The onus is on the patent examiner to perform a prior art search. The applicant is not required to do a prior art search.]

According to the USPTO, approximately 350,000 patents are granted each year, based on the work of about 3,250 patent examiners. Assuming a 2,080-hour work year, that translates to an average of 19 hours review time for each patent granted. [IPBiz: In FY05, there were 384,228 APPLICATIONS.]

But current patent law leans in favor of patent holders. For a patent to be found unenforceable based on prior art, it would have to be proven that the patent applicant not only failed to disclose the prior art but also omitted the prior art in its patent application intentionally, a challenging notion to prove. [IPBiz: there is confusion between unenforceability and invalidity. A patent is found to be unenforceable because of failure to disclose something.]

As is currently stands, patent applications remain secret until the patent is granted. Among other provisions of the act, the legislation would allow a more public vetting of patents before they are issued, thus giving those who would claim the existence of prior art an opportunity to weigh in on the USPTO’s patent granting decision. [IPBiz: patent applications are published approximately 18 months after filing.]

Mary Z. Connaughton can be reached at


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