Friday, February 09, 2007

Provisions in PDQ patent bill and patent reform generally

With patent reform scheduled for discussion within the Judiciary Committee on 15 Feb 07, one has to review the provisions of the Boucher/Berman PDQ bill, which will presumably be similar to H.R. 5096 (April 2006).

Internetnews reported: Boucher and Rep. Howard Berman (D-Calif.) introduced the Patents Depend on Quality Act of 2006 [IPBiz ?, 2007] (PDQ Act). Boucher said hearings would begin this month, and he hoped for a full floor vote by March or April. The bill would clarify when a court can grant injunctive relief, require all patent applications be published within 18 months of filing, allow third parties to comment during the application process and establish administrative procedures for post grant reviews.

The previous bill included a section 2 (chapter 32) on opposition which required that an opposer oppose the issued patent not later than 9 months after the grant of the patent. [323, lines 15-17] The burden of proof for the opposer would be preponderance of the evidence. [332, lines 21-24]

The previous bill included a section 4 (which would amend section 131 of title 35) on submissions by third parties. The written submissions would have to be within 6 months of publication of the patent application OR before the date of notice of allowance, whichever occurs FIRST. [IPBiz notes within 6 months of publication is likely to occur first for most applications.] There is a fee for third party submission. A factor in determining "how much" of an improvement this provision is over current re-examination practice is "how much" the fee is.

Provisions such as these have been discussed before. In the context of reviewing Innovation and Its Discontents, Rochelle Dreyfuss wrote of similar proposals by Jaffe and Lerner.

Of third party submissions (denominated by Jaffe and Lerner as "pre-grant opposition"), Dreyfuss wrote: There is not, however, much that is new here: the PTO already has such a procedure, albeit of narrow scope. And even if submission practice is improved, this stage is not likely to have a dramatic impact on quality. The small possibility of stopping a patent "on the cheap" does not provide much incentive to study applications as they are published. 104 UMichigan Law Review at 1573. IPBiz notes that one could apply the comments of Dreyfuss to Peer-to-Patent review (refer to Beth Noveck, 20 Harvard Journal of Law and Technology (2006))

Of post-grant opposition, Dreyfuss wrote Postgrant reexamination allows challengers to formally argue for invalidiation. Jaffe and Lerner did not specify a standard of review or time period, which absence Dreyfuss criticized. The PDQ Act specifies preponderance and 9 months, which is intended to balance the interest of inventors in stable rights against the public's interest in detailed scrutiny of the patent.

Of the "patent quality" issue, Patently-O wrote:

We know from several studies as well as anecdotal evidence that plenty patents are issued covering obvious ideas. It is hard work to find and sift-through prior art — not to mention the difficult task of comparing it to a patentee’s claimed invention. Obvious patents make the patent system look bad and drag-down the system.

One commenter to Patently-O wrote of "peer to patent":

Bah! I think this is doomed to fail. People already have the ability to review and submit prior art (anonymously even) after a patent has been published.

This effort will lead to crap submissions. People who know technology/patents time is too valuable to spend "volunteering" as the mass volume of patents is too large almost even to comprehend. Killing a single patent isn't rewarding enough to get the volunteers.

Another commenter suggested that "peer to patent" would help large companies at the expense of smaller ones:

In the end, this kind of a system will help the big boys, who can afford to hire people full time to monitor and shoot down little guy patent apps.

Another commenter pointed to the difficulty in utilizing prior art against patent claims:

I was at one of her presentations where she failed to address the paramount issue that would determine the success of this project -- claim interpretation.

A different commenter suggested the academics of intellectual property are simply "out of touch" with the real world of patent law:

Is it just me, or does it seem that there is a major disconnect between those in academia and those who actually interface with clients who sincerely believe they have come up with a better idea and would like to protect it if possible? IPBiz notes that when the Stanford Law Review proclaims Gary Boone the inventor of the integrated circuit, there is more than a disconnect between everyday practice and the academics.

In passing, note that the December 2006 issue of JPTOS contains: On Patent Quality and Patent Reform - Lawrence B. Ebert


Blogger Lawrence B. Ebert said...

Of the thread on Patently-O about "peer-to-patent", Michael Slonecker wrote of allegations that the patent system is broken:

My sole point is provide my perspective that this "broken" system is anything but that. When problems were identified solutions have been forthcoming. To suggest that the system is stagnant and hidebound could not be further from the truth. I do not repair a flat tire by disassembling my car and then reassembling it. I fix the tire. I believe the same can be said of the patent system.

One final thought. It seems to me that turnabout is fair play. Perhaps we should consider that intended journal articles likewise be the subject of widespread, open to everyone, internet review (call it "Peer to Paper" if you will), and must meet at a minimum requirements equivalent to Sections 103 and 112. After all, how can the progress of science take place with the publication of papers that are merely trivial extensions of what has already been written about ad nauseum, or papers that would have been written anyway if others would only take the time out from their busy schedules to commit pen to paper?

One notes that the Quillen/Webster models for "patent grant rate" have produced grant rates in excess of 100%. If this were Joe Newman, there would be howling about impossibility, but, because this is patent law reform, the legal academics talk about the plethora of bad patents. Lurking in the background is discussion about how successful the aviation patent pool of World War I was, even though the patent pool produced no U.S. made WWI fighters, did produce a post WWI surplus of planes, and was generally considered biased against small companies.

1:01 PM  
Blogger Lawrence B. Ebert said...

As a followup, back on 7 Oct 06, Slonecker bravely challenged a post by Professor Epstein of the University of Chicago. Slonecker's post included:

He [Epstein] ignores the sequential nature of discovey and while he asserts that patent law may accelerate an invention ignores that it will then tend to delay follow-on improvements (think airplanes and steam engines where this happened). At the very end he admits that there is a problem with claim definition in patent law. Well "duh".

The real problem the SCOTUS was dealing with in eBay was how to deal with garbage patents and inadvertent infringers. Patent law needs a serious review starting with what is patentable and recognizing that the constitution only permits the granting of patents to the extent that the net effect of the patent law is to promote progress. If the overall effect of any provision is to impede progress that provision is unconstitutional.

-->Of Slonecker's comment about aviation, one notes

#1. The Wrights did not stop anyone who merely experimented using their invention or who merely used the invention for non-commercial purposes.

#2. Any "delay" was caused by the inability of the Wrights and others to agree on a price for the patent royalty. There was no refusal to license.

#3. Any posited "delay" is America-centric, because improvements in airplanes were readily made in Europe during WWI.

-->Of Slonecker's comment about --recognizing that the constitution only permits the granting of patents to the extent that the net effect of the patent law is to promote progress--
Article I, section 8 gives Congress the power "To promote the progress of science and useful arts." This power is the only power in section 8 that says "how" to exercise the power: by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

As was apparent in the recent Supreme Court copyright case, the Constitution gives the ball to Congress to run with and Congress will decide "what promotes progress."

Separately, Article I section 8 is a grant of power, not a requirement to use the power. Congress doesn't have to do anything, anymore than it doesn't have to grant letters of marque and reprisal, or fund the Supreme Court.

1:30 PM  

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