Thursday, February 15, 2007

Prepared testimony of Adam Jaffe for 15 Feb. 07

The prepared testimony of Professor Jaffe for the hearing at 2pm today (Feb. 15, 2007) is available at

In terms of provocative statements -->

At page 2, we have: "In the last two decades, however, the role of patents in the U.S. innovation system has changed from fuel for the engine to sand in the gears."

At page 6, we have: "The first step to understanding why greatly increasing the resources for examination is not the best solution to the problem is to understand that most patents are, and always will be, worthless and unimportant."

Otherwise -->

On February 15, Professor Jaffe gave prepared testimony before the Judiciary Subcommittee on the Courts, the Internet, and Intellectual Property which testimony touched on topics discussed in the IPFrontline article.

Professor Jaffe noted at page 3 of his prepared testimony that the topic for the hearing on 15 Feb 07 was the case for patent reform, not the (proposed) details of such reform. The text which followed mirrored text in Innovation and Its Discontents, including the line about the creation of the CAFC/changes in USPTO: "It is now apparent that these seemingly mundane procedural changes, taken together, have resulted in the most profound changes in US patent policy and practice since 1836."

Following a discussion of the rate of growth of applications and of issued patents, Jaffe asserted at page 4: "While some of this increase appears to reflect real growth in innovation, it is clear that a large part of the increase is a response to the increased laxity of the PTO, which grants a significantly larger fraction of the applications it receives than do its counterparts in Europe and Japan." Thus, the case for reform would seem to rest on a difference in patent grant rates between the US on one hand and Europe/Japan on the other hand.

Also on page 4, Jaffe identifies a deeper fundamental problem: "The incentives in the [patent] system now encourage frivolous applications, cursory review of those applications by the PTO, and indiscriminant filing of patent infringement suits as a generic competition weapon."

Under the heading of "reduce uncertainty" on page 5, Jaffe has the text: "Ironically, the only aspect of the patent process that has become more certain is the application process itself, as the ultimate granting of some patent from each original application has become almost a sure thing!

Also, on page 5, Jaffe states: "Fortunately, it is also not necessary to expend the resources necessary to provide very reliable examination for all patents applications."

At this point in Jaffe's prepared testimony one has the jump to "rational ignorance," much as discussed in Innovation and Its Discontents. As in the book, Jaffe states: "I agree with Lemley that it would be inefficient to provide thorough examination for all applications at the current rate of patent application. I disagree, however, that the current situation is acceptably efficient." In the prepared testimony, Jaffe mentions three areas in which to depart from the current situation:

--Inventors respond to how the patent office behaves. [This is not a suggested proposal for change but a suggested outcome if quality is improved: if the PTO consistently rejected applications for bad patents, then people would understand applying for bad patents is a waste of money. This of course begs the question of what a bad patent is or how to deal with one. In this, the proposal reminds one of the University of Rochester patent on COX-2 inhibitors.]

--Get information to flow into the PTO. Jaffe suggests much relevant information on whether or not the patent should issue is in the hands of competitors and not with the PTO. Jaffe could have concluded one sentence in the following matter: If a competitor of mine has filed a patent application, the last thing I want to see is for them to be issued a patent. In terms of the past, Jaffe's suggestion evokes the image of the use by Curtiss of the Aerodrome against the Wright Brothers.

--Potential litigants respond to how the courts behave. What this has to do with examination of applications is not clear.

Thus, Jaffe's proposals reduce to the one suggestion to allow competitors to get information to the PTO. There is a re-examination procedure already in place. Building a case for reform might have discussed inadequacies with the current method of getting prior art before the USPTO, especially in a pre-grant context. And, one might have wanted to ask the Wright Brothers about the prior art that competitors present.

[For those who don't remember, competitor Glenn Curtiss resurrected the pre-Wright Langley Aerodrome as prior art against the Wrights. Sadly, it had been refitted and improved with post-Wright advancements. Issues surrounding this use of "prior art" caused the Wright Flyer to be outside the United States until after Orville Wright's death in 1948.]

Some discussion of the hearing on 15 Feb. 07 may be found at:

Wired News .

See also Techdirt:

Congress created the Court of Appeals for the Federal Circuit (CAFC) which handles all patent-related appeals. Seems like a good idea, right? Except that by establishing such a specialized court, it didn't take long for the court to be dominated by former patent attorneys who view the patent system in a very different way than its originally intended purpose. They tend to prefer a much broader scope of patents -- and, indeed, CAFC helped make it okay for business models and software to be patented.


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