It is that time of the year when everyone has made or is making resolutions for the new year, most of which will undoubtedly be broken within a few days or weeks, particularly those promises to lose weight, exercise more or find more time for unwinding and better managing stress. All are things I hope to do in the new year, but it will be so much easier to lose weight once football season is over, and exercising will be easier when it is a little warmer outside and the days are longer. On top of that, after taking time off for the holidays how can anyone really manage stress when you come back from the holidays to a pile of work? Oh well… I might as well take this opportunity to set forth my Patent Wishes for 2010 instead of engage in resolutions sure to be broken.
Last year I provided 5 wishes, 2 of which came true — Obama appointing a Patent Attorney and the withdraw of the claims and continuations rules. The Patent Office also adopted several suggestions I made throughout the year, or they came up with the same ideas on their own, who knows? Whatever the case may be, I am hoping that this year I will get at least a few of my wishes granted, but at least some require Congressional cooperation, so I am not going to do anything silly like hold my breath, although I am sure some would like that! All I can do is give good ideas and hope folks in the right places are listening, which I suspect they are.
Without further ado, here are my patent wishes for 2010:
- Repeal KSR v. Teleflex
- Adequate Funding for the Patent and Trademark Office
- Reform Inequitable Conduct
- Do away with Examination Support Documents
- Acceleration for Those Without Multiple Applications
- Frivolous, Fanciful & Otherwise Non-attainable Wishes
And now the analysis…1. Repeal KSR v. Teleflex
I have a sneaky suspicion this is going to be on the list every year until it finally happens, the Federal Circuit evolves the law to the point where it has no meaning, or I am too old to type. Nevertheless, at some point in time when Congress comes back to patent reform (which we all know they will, they just can’t help themselves) I hope someone notices that the United States Supreme Court completely ignored 35 USC 103 and clear Congressional intent when they issued the decision in KSR v. Teleflex. Perhaps is Congress understands that the Supreme Court didn’t read 103 and ignored clear Legislative History someone will want to engage in a power struggle and demonstrate to the Court who is in charge. In the meantime, I will keep dreaming!
In any event, in 1952 Congress specifically did away with what was previously the flash of creative genius requirement to obtain a patent, but the Supreme Court reinstituted the flash of creative genius requirement, just under the guise of “common sense.” Whether we call it flash of creative genius or common sense, the test forces the reviewer to qualitatively evaluate the inventive contribution to see if it is really enough of an invention or too trivial to obtain a patent. The trouble is there are no objective standards, which means that the reviewer gets to impose their own subjective believes and values. In fact, if the inventor were at all motivated to attempt to solve a problem no patent could be obtained because that motivation alone would mean that the outcome was not inspired enough to be an innovation. Absolutely ridiculous, but yet that is exactly what the Supreme Court ruled.
With the KSR test there is no way to ensure even application of the laws, and while we wait for either a Congressional or Judicial fix, attorneys should be challenging 103 on constitutional grounds. The Federal Government cannot engage in activities that treat similarly situated people differently. That is discrimination and an obviousness test that has no objective component and looks like the innovation equivalent of the “I’ll know it when I see it” obscenity test is unconstitutional, not to mention recklessly stupid!
Someone in Congress who wants to unleash American innovation to solve our economic woes needs to sort out the patent system and one good way to start would be by getting rid of the subjective standard for obviousness announced by the Supreme Court in KSR v. Teleflex. In fact, the only legislative change probably necessary is underlining the last sentence of 103(a) followed by the following: “We really meant it, and the underlining of the previous sentence is for the express intent of statutorily overruling KSR v. Teleflex and re-implementing the objective standard for obviousness embodied in the teaching, suggestion and motivation test!”
2. Adequate Funding for the Patent and Trademark Office
The single word that best describes Congress is “clueless.” To test this theory at a New Years Eve party I asked friends and family members, many who were not lawyers, whether they would leave their kids with a Member of Congress to act as a babysitter. Yes, I know I am a fun guy, but you can’t imagine the thought provoking discussions that ensued! In any event, the answer from everyone, even die-hard liberal Democrats who largely agree with what Congress is presently doing, was a resounding NO! Nevertheless, we send them to Washington, DC to represent us, make decisions for us, steer the direction of our lives and shape the lives of our children. Yet no one wants them to babysit. How curious!
One reason why you would never want any Member of Congress to be a babysitter is because in the face of overwhelmingly clear and correct choices they always seem to make the wrong choice. You wouldn’t want to hire a babysitter who is going to have a crazy party that will require the cops to visit, would you? Of course not. Yet we entrust them to figure out the economic crisis and chart a responsible path forward. Sometimes I wonder if we aren’t the crazy ones!
In any event, as President Obama and high profile politicians from both sides of the aisle praise American ingenuity and applaud the work ethic and wax poetically about innovation and how green this or green that or tech this or tech that could and should lead to a new future, with high paying jobs and whole new industries, they are putting a hard cap on funding for the Patent Office and implementing an innovation tax.
The Patent Office was mismanaged for years, there is a ridiculous amount of work to be done getting through the backlog of applications and now that President Obama has a solid team in place the Congress has decided to freeze the USPTO budget and siphon funds away for other purposes. The USPTO is a user fee funded enterprise, and the USPTO needs every dollar they can get to handle the work load, which is increasing, and to stop being the logjam in the tech based economic recovery that we could be enjoying. But as the Patent Office will get in more work they will have to handle that increased workload with less money, because funding of innovators is needed to pay for school lunches or some such nonsense.
Wake up Congress! Small business are not expanding, investors are leaving and short-sighted innovation policy is preventing a recovery. I wish that fee diversion be stopped forever, and the USPTO budget increased by at least 50%! With trillions being spent like monopoly money $1 billion to jump start a new tidal wave of innovation would reverberate through the economy and do what trillions of dollars of stimulus were supposed to do, but never did.
3. Reform Inequitable Conduct
David Kappos and his band of managers and officials at the USPTO are going to have to do a lot more with less, because we all know that Congress will not adequately fund the Patent Office. As sad as that is, it is reality. One way that the USPTO could cut into the backlog is by getting better information from applicants, thereby cutting down the time it takes to examine a patent application and making all of the approximately 6,000 patent examiners more efficient. Sounds easy, right? Unfortunately no, thanks to the Federal Circuit continually ignoring 37 CFR 1.56.
Rule 56 as patent attorneys call it relates to the duty to disclose material information known to the applicant to the patent examiner. Back in 1991 the USPTO changed the standard from requiring anything a “reasonable examiner” would want to know to a standard that requires material information that would make a good rejection to be disclosed. The net effect is the USPTO required less disclosure, and if you tailored your patent claims to address prior art you knew about you didn’t have to disclose the prior art. Of course, if you played fast and loose with the rules the prior art would not be considered and you might be committing fraud, neither of which are good things. But at least the USPTO could get and require the best stuff to be presented and not be buried in a sea of tangentially related information that a “reasonable examiner” might want to know about in a perfect world where they had unlimited amounts of time to examine an application.
Unfortunately, the Federal Circuit doesn’t think that disclosing information that would make for a good rejection is enough, and has pretty much ignored Rule 56, even saying that the Patent Office can have its own standard, but the Federal Circuit doesn’t have to follow it. The CAFC wants everything disclosed, and since they are the final word (almost always) on patent validity you have to follow what they demand, which means the Patent Office gets buried with anything and everything the applicant knows about so it cannot be said they hid anything. So it takes longer amounts of time for examiners, and the disclosures are not at all helpful. On top of that, because you don’t want to misstate anything you simply play hide the ball because if you actually say something useful it could be used later to claim you narrowed the scope of your claims by getting the examiner to rely on what you said.
This is ridiculous, of course, but it is what we live with because the CAFC refuses to defer to the Patent Office on what is fraud on the Patent Office, apparently believing they know better. So here we are. Congress needs to step in and statutorily legislate Rule 56, giving the Patent Office the ability to define how much disclosure they want to satisfy the obligation to come clean and put the cards on the table.
In short, with inequitable conduct reform the Patent Office could require more cooperation from applicants, streamline the process and not have the patents issued through such a collaborative examination being useless and easily challenged from what I will call fictitious fraud.
4. Do away with Examination Support Documents
While the Patent Office cannot force the Federal Circuit to follow Rule 56, there are things they could do that would significantly entice patent applicants to help them do the heavy lifting of patent examination while not ridiculously over burdening applicants, costing them many additional thousands of dollars per application and without the resulting patent being all but certainly unenforceable thanks to inequitable conduct. Do away with Examination Support Documents and institute a procedure where applicants can get quick consideration if they are willing to meaningful participate without also having to make admissions that will lead to serial and significant inequitable conduct charges.
In theory, Examination Support Documents are a good idea. File an application, provide a detailed list of all the prior art, a claim chart, explain why your claims are patentable and distinguish the prior art. The trouble is that no one would ever do that with a commercially relevant patent because the more you say the more likely an inequitable conduct charge will be. That is just the reality of the situation. Sadly, no one would ever consider an Examination Support Document for patents that are not highly commercially relevant because they cost many thousands of dollars extra to prepare, perhaps $10,000 to $20,000, perhaps even more. So in true Soviet Era government style the USPTO has a procedure that looks good on paper but is never used because of the overwhelmingly negative consequences.
I wish ESDs disappear! In their place some rational, usable and far less costly procedure that would assist patent examiners should be put in its place. There is nothing wrong with moving to the front of the line applications that come along with a patent search, and there is nothing wrong with streamlining examination to consider those references alone. If the applicant wants a reference considered they should bring it to the table and explain why the invention is unique over the reference, and such explanations, whether in writing or verbally, should NOT become a part of the record. Applicants and their representatives can and should help patent examiners, but you cannot expect anyone to do anything that would jeopardize the integrity of the patent received, when even cheap patents can easily cost $10,000 or more to obtain.
5. Acceleration for Those Without Multiple Applications
In an effort to at least try and clear up some of the backlog, David Kappos announced in November 2009 that the Patent Office would move an application to the front of the line for consideration if the patent applicant would give up on and presumably abandon another patent application. He took some heat in the independent inventor community for this, and I think that was unjustified. The truth is that with as long as some applications have been pending without any action by the Patent Office there are undoubtedly quite a number of patent applications that are no longer relevant. Technology in some areas moves quite fast, and an early application prior to implementation could easily become outdated even without a lengthy backlog. A brilliant idea really to get rid of some commercially irrelevant patent applications.
The justifiable part of the criticism from independent inventors and small businesses came from those who do not have multiple applications. What is an inventor or business to do if they have only one patent application pending? For those folks it almost is unfair to accelerate patent applications of others, which would necessarily mean that those who don’t have one to give up on, or don’t want to give up on any will have others accelerated in front of them out of turn. This could potentially make the wait even longer for those with only a single patent application or those without an application worthy of being abandoned.
I think Kappos’ idea is in the right direction and he should be commended for thinking outside the box. Only someone who understands invention and patent realities would know that some applications could easily be given up, and a little incentive might actually make that more likely. So I choose not to jump on Kappos for a good idea, but rather wish for a more complete solution that will find a way to allow for acceleration of commercially relevant patent applications by those with only one application or none to abandon.
I suggest that if an applicant can demonstrate they have investors, an imminent licensing deal or that the application relates to an invention that will result in individuals being hired they should be allowed to move to the front of the line even if they don’t have an application to abandon. Perhaps this could apply to independent inventors and micro-businesses having 50 or fewer employees.
6. Frivolous, Fanciful & Otherwise Non-attainable Wishes
Wishes 1 and 3 are non-attainable, and 2 is an extreme long shot as well. A long shot not because it isn’t right or smart, just politically something that won’t get many votes. Numbers 4 and 5 are doable, and can be done by the USPTO, so I am hopeful. But that leaves a number of things that are fanciful at best, but would be way-cool! These include:
- Judges Rader and Newman being assigned to every 3 judge panel.
- The Patent Office sua sponte staying all Bilski applications pending a decision from the Supreme Court. It just doesn’t make sense to pretend the law will remain the same and force RCE applications, appeals, wasted time and needless costs only to need to start over from scratch.
- The Federal Trade Commission actually ending invention scams.
- The Patent Office actually enforcing the rules of practice, namely Rule 11.5, putting an end to those openly representing clients without a license.
- Tax credits for research and development of green technologies and other technologies that will lead to the creation of jobs for US workers.
- As for a non-patent wish… let me go with peace on earth, good will toward men and the whole story about the JFK assassination. Sorry Arlen, I just don’t buy the single bullet theory.