TRUE REFORM –
We don’t need the pretended reform the proposed Patent Act will give us. What we do need are the following true reforms …
Competent PTO management– The next administration needs to break with the recent trend and stop appointing PTO management that lacks experience and expertise in patent law. They must have management competence with substantial ties to both large and small firms so as to avoid bias. We must stop political appointments. Only then will we get a competent PTO able to meet the needs of innovators and fulfill their Congressional and Constitutional mandate to “promote the progress of Science and useful Arts”.
A PTO who maintains its independence from big business– Currently over 95% of reexamination requests are granted and a shocking number of them are granted within 3 days of filing. But the law requires a substantial question of patentability before granting such requests. Is the PTO following the letter of the law, or has it become a rubber stamp for large corporate infringers?
More timely reexamination– On average it takes about 2.5 years to complete reexam. During that time small patentees often are unable to monetize their inventions. Such a lengthy wait can then pose serious dangers to small entities. If the party requesting the reexam cannot prepare a more precise request that the PTO can act promptly on, should those requests ever have been granted? Reexam should not be an invitation for a witch hunt. Maximum time should be set -no more than say 6 months. The burden of proof should be on the 3rd party, not on the PTO. This will speed things up and minimize the demands on the office because the request will have to provide concise, clear and convincing evidence for invalidity. It should require little work from the office. The requestor should do the brunt of the work. The burden of proof should be on the party requesting reexam, not on the PTO to establish invalidity. This will also provide a more impartial review. Once considered in reexam, a reference may not be used in a later reexam or in court -one bite of the apple. This will eliminate the possibility of infringers continually going to the well to frustrate justice. Any party submitting a supposed prior art reference for reexam must do so within 90 days of their first knowledge.
Shorter patent pendencies– In some sections of the PTO it takes 8 years just to get a first office action. That affects the ability of small entities to get funded which imperils their ability to obtain foreign patent protection and thus allow foreign competitors control of overseas markets. If they can’t get funded, they go out of business and we miss the introduction of promising discoveries.
Strict adherence to the law by the PTO in prosecution– Many feel the PTO often makes out of hand rejections in patent applications without a legal basis. Small entities cannot afford to fight to get their patents. Without timely patents we go out of business.
Correcting the Patent Act that the Supreme Court used in the eBay decision to deny injunctions– The Constitution guarantees inventors exclusive rights to their inventions. There is no requirement that the inventor commercialize the invention. Thus, if we cannot get an injunction our constitutional rights have been denied us. Many small entities do not have the funds or management skills to commercialize their inventions and cannot obtain them unless they can first get an injunction. It then becomes a chicken and egg game. We disclose, we get exclusive rights. That was the deal. Without exclusive rights we cannot obtain full value for our inventions and face increased difficulty in getting funded so we can commercialize them.
Restore the traditional "Teaching, Suggestion or Motivation" test for obviousness and undo the United States Supreme Court decision in KSR v. Teleflex. These two changes in patent law (including injunctions as above) have tilted the scale in favor of large infringers. Without a strong patent system, small entities cannot afford to innovate. Without creative small entities there will be no one pushing the big corporations who will then rely on their sheer size to secure their market share...and the public in the end will be the big loser as they will pay higher prices for inferior and antiquated products and continue to lose jobs to overseas as that is the trend for the big companies. Job growth in the US has always been fueled by small firms and start ups. Unless we restore a sound patent system they and their promising new discoveries will die on the vine and we will fail at engineering our way out of this troubling economic morass we are now in.
Contrary to what large tech companies would have Congress believe, as a result of recent Supreme Court and federal circuit patent case rulings, if there is an unfair advantage within the patent system, it is in favor of large corporations who are able to bleed inventors dry while dragging out patent suits or buy them off at fire sale rates – keeping the lions share of their ill-gotten gains. If Congress does not act to restore some sanity to the patent system – meaning scrap the bill now in committee and draft a patent bill that restores value to the US patent, real technological advancements will in time come to a halt and with it job creation will suffer.
Return to 17 years from issue patent term– Since patent term was changed from date of issue to date of filing, pendency at the PTO has increased dramatically. As a result, inventors have suffered a substantial decrease in patent term. The problem for small entities is that until they get their patents they are generally unable to get funded and thus unable to commercialize their inventions in any meaningful way. If they end up with only 5 years of patent term left by the time they get their patent, they effectively have no chance of establishing themselves in the marketplace they created. To correct this injustice, patent term should be restored to provide at least 17 years from date of issue. Inventors should not be punished for PTO foot dragging.
Restore the doctrine of equivalents.
Sunset employee assignments annually, and thereby make signing of assignment part of annual review of wage and benefit compensation.
Mandate employee royalty compensation to provide incentive for employees to disclose inventions.
Repeal 18 month publication and mandate faster patent prosecution, prioritizing applications as necessary to ensure that pendency does not exceed 18 months. Publication prior to issuance jeopardizes the ability of small entities to maintain their lead over competitors. If a patent is not issued, it should not be published. That is misappropriation of invention and discourages future disclosure. Inventors will be more apt to rely on trade secret if their inventions are to be disclosed publicly where no patent is awarded.
Change basis for bringing Declaratory Judgements to allow patentees to at least inform parties of patents and availability of license or purchase. Present law only encourages filing suit by both parties before talking. This would reduce litigation.
The standard for new art in reexam should be closer to clear and convincing as in court, otherwise the years a patentee spends in prosecution has little value. Don’t further burden small entities.
In prosecution, applicants should be required to furnish a claim chart showing support in the earliest specification for all elements of each claim. That will reduce the time required to examine, speed issuance, and result in better claims and stronger patents.
Establish a patent court or at least provide for a new set of rules in patent litigation even more streamlined than the rules of say the district court of E TX, or instead USA&M's arbitration rules as an option to the patentee. Suit would be brought as now in any federal district using these new rules. The plaintiff may still request a jury or even a smaller jury of say 6 members. That way we use federal judges, a simplified set of rules with which even inventors may file suit on their own (pro se) if they choose, and a trial by jury. Perhaps use the CCPA for these cases.
Additionally, a PTO remedy could be set up to permit inventors to bring accused infringers into an administrative proceeding to determine validity and infringement, and perhaps a remedy. I believe Mexico does something like this. Currently many inventions do not have sufficient value to warrant litigation so their inventors go uncompensated. When approaching an infringer if you cannot afford to sue they will tell you “so sue me” rather than take a license. Such a remedy would allow many inventors to benefit from their creations who would not otherwise be able to do so.
It would also be helpful to appoint some patent attorneys as federal judges since most judges lack an understanding of patent law and do not have a technical background. That’s why many hate patent cases which are generally complex and lengthy. At least one should be appointed to the Supreme Court as technology is so important to our economy and patents are so important to technology. Many have been critical of the Supreme Court in recent cases for not understanding patents.
Deferred Examination – Not every application should be or even needs to be examined. We should allow Examination to be deferred for up to five years with a refund available if examination is not requested, to provide an incentive to withdraw an application. Many of these applications will go away. That will reduce the backlog.
We should eliminate the need for most divisionals (at least where the inventions are related) by allowing the applicant to pay a supplemental search and examination fee and giving the Examiner additional performance credits for the additional related inventions.
If the Examiner changes the ground of rejection during an Appeal after receiving a brief on the merits, the applicant should get a full refund of the appeal fee and brief fee, and the Examiner loses credit for the original rejection, to stop Examiners from abusing applicants with shoddy rejections.
From a seasoned patent attorney... “In my opinion the current administration of the PTO has been unnecessarily antagonistic of the patent bar and of patent applicants. There are a number of measures that could be easily implemented to improve the operation of the office for both Examiners and Applicants. The Office should stop trying to prevent inventors from getting patents, and return to encouraging innovation by granting meritorious patents.”
An Examiner should not be allowed to make final a rejection in a case based on new prior art when the claims were not amended in response to the art of the previous rejection, which was overcome.
Open regional Patent Offices
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