Thursday, April 09, 2009

BusinessWeek pushes Lemley book on patent reform

In an article Are Patent Problems Stifling U.S. Innovation? < BusinessWeek promotes the upcoming Lemley/Burke book The Patent Crisis and How the Courts Can Solve It.

According to the article, the "biggest" change in the Patent Reform Act of 2009 is "first to file": The biggest change: Patents would go to the first to file an application, rather than the first to invent, which is often hard to determine. The article suugests forum shopping is about judges ["The bill would also curb forum shopping, in which plaintiffs look around the U.S. for judges they believe are sympathetic to their side." ], although one notes ED Texas was mainly about pro-plaintiff juries, and the ED Texas situation changed with the 5th Circuit's VW decision.

Of Professor Lemley:

Mark A. Lemley, a professor at Stanford Law School and specialist in intellectual property, has been sounding the alarm on these issues for years. He's co-author, with Dan L. Burk, of an upcoming book, The Patent Crisis and How the Courts Can Solve It, with Dan L. Burk. Lemley spoke to BusinessWeek's Damian Joseph.

There were themes from the 2004 "Ending Abuse...": I think there are a couple of problems. The Patent Office gets 450,000 applications a year, and there's a backlog of 1 million applications—700,000 of them are just sitting in a stack. The examiners don't have time to review them. It's sort of turned patenting to a mass-production business, and I think there are concerns that quality has declined. A lot of patents shouldn't have been issued.

Also it is impossible to finally ever reject a patent. Someone can go back unlimited times and get a do-over. If the patent office denies your application, you can keep coming back and back until they approve. Examiners turn over pretty quickly so if a new examiner reviews the resubmitted application, or he's not paying attention, it can slip through.

BusinessWeek also pushed peer-to-patent: (For yet another solution, check out this BusinessWeek article on peer-to-patent crowdsourcing.)

See also

One commenter to BusinessWeek wrote: The main problem is PTO management's failure to adapt sufficiently to the large increase in filings over the past decade. PTO management problems are made worse by changing administrations who make political appointments to a job which requires exceptional management experience and technical understanding of how the patent system really works. The 1952-enacted patent statutes adapted pretty well to the invention of the computer, microprocessors, telecommunications advances and the like between 1952 and 1995. Information technology is not that much different from other areas of human ingenuity. What is different from the past is the volume of work to be done at the USPTO. Failure of management to manage change successfully has resulted in low quality patents driving up clearance costs and litigation costs for those competitors who should have the right to compete. Reform which does not re-engineer the way the PTO is managed is doomed to fail in the long run.

***Comment to BusinessWeek

The biggest issue in patent reform has been calculation of damages. "But for" the IT industries not compromising on damages last time around, many of the other provisions could have passed into law. Forum-shopping (which has been more about sympathetic juries in ED Texas than anything else) has been curbed by judical decisions in VW (5th Circuit) and TS Tech (Federal Circuit). Unmentioned in the BusinessWeek piece was "post grant review", an added inspection step which Deming would find to be not a quality proposal and which would be used by larger entities against smaller entities. "First to file" and the various proposed rules on continuations would have a negligible impact on the application backlog problem, which requires a major overhaul of the way the USPTO is run.

***Elsewhere, Patent Docs has discussion of opponents to patent reform, including Ron Katznelson


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