The Patent Twilight Zone: Keeping Significant Innovations Secret
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Jul 1, 2012 @ 7:30 am
On April 20, 2012, the Patent and Trademark Office published a Notice in the Federal Register titled Notice of Request for Comments on the Feasibility of Placing Economically Significant Patents Under a Secrecy Order and the Need To Review Criteria Used in Determining Secrecy Orders Related to National Security. It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key. Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.
Yes, it seems that there are some in Congress that would prefer for truly important innovations to be unpatentable. James Madison must be rolling over in his grave! It is bad enough that any of the brilliant minds in Congress think that significant innovations ought not be patented, but Congress is actually contemplating the possibility of ordering economically significant innovations to be maintained in secret so no one can learn of them?
Those wishing to submit comments for the USPTO to consider as part of this nonsensical study need to submit comments on or before June 19, 2012, so the comment period is over. I had wanted to write about this earlier, but life got in the way and then like a bad dream I put it out of my head, choosing to believe as a result of stress and being overly emotional my memory had to be deceiving me. Surely Congress wouldn’t consider scuttling those innovations that are the most valuable. That would be a bridge to far for even Members of Congress.
Sadly, I fell prey to over-estimating Congress. Yes, I know. No one has ever made a mistake in under estimating the collective intelligence of a body that struggles to exhibit even a modicum of common sense. It won’t happen again. Mea culpa. I apologize.
Twilight Zone — Patent Style
As you contemplate that unfortunate reality your eyes will begin to get heavy, you will start to see the screen wiggle at first and then start to fade to black as a pinwheel of black and white lures you in… three… two… one… You are about to begin a journey through space and time, into another dimension. On this odyssey you will encounter a wondrous land whose boundaries are ill defined, yet sadly predictable. The vastness of this timeless infinity forms a middle ground between bewilderment and reality, superstition and control, and repugnance and rapture. It lies at the heart of all of your worst fears, but holds the key to the doorway of eternal understanding. You are about to enter the Twilight Zone — the patent edition!
Shrouded by the cloak of the Twilight Zone, let’s be frank. This study is nothing more than a waste of our taxpayer dollars. The fact that it is taking place at a time when we borrow 42% of every dollar we spend just adds insult to injury. We have a $16 trillion national debt and annual budget deficits north of $1 trillion as far as the eye can see and we are spending precious USPTO recourses studying whether there are some inventions that are just too important and innovative to be known by mere mortals? Ridiculous doesn’t even begin to express how much of a farce this endeavor is. This study is insulting and exemplifies everything wrong with government. The federal government has become stupid and wasteful. Our leaders are not good stewards, nor are they appropriate fiduciaries of our money.
Where is this Coming From?
The Commerce, Justice, Science, and Related Agencies Subcommittee issued a Report on the 2012 Appropriations Bill on July 20, 2011, which in relevant part stated:
By statute, patent applications are published no earlier than 18 months after the filing date, but it takes an average of about three years for a patent application to be processed. This period of time between publication and patent award provides worldwide access to the information included in those applications. In some circumstances, this information allows competitors to design around U.S. technologies and seize markets before the U.S. inventor is able to raise financing and secure a market.
It would seem that the concern raised is not outside the mainstream and may actually be a good idea, or at least something that demonstrates some basic, functional knowledge of our patent system. Only over the last 12 to 13 years have patent applications been published in the United States prior to the patent issuing. When this change occurred it was considered a major step forward toward harmonization of U.S. patent laws because virtually everyone else publishes applications 18 months after the priority date. So now the default in the U.S. is that a patent application will publish at the 18 month mark. But as the Patent Office has increasingly struggled to keep up with the high volume of patent applications and the backlog of patent applications peaked at 1.2 million, it can take many years to obtain a patent.
In fact, according to the latest USPTO estimates out in May 2012, this is how long it takes for various applications to go from filing to completion:
- 85.3 months average from filing to decision by the Board
- 78.8 months average from filing to completion for a Continuation
- 79.7 months average from filing to completion for a Divisional
- 62.2 months average from filing to completion if at least 1 RCE is filed
If you need to go to appeal it will take an average of over 7 years. This is significant because there are some Art Units within the Patent Office that simply refuse to issue patents and are openly not doing their job in blatant disregard for the law. Virtually all of the patents issued in those Art Units are mandated to be issued by Board decision.
The RCE average is particularly relevant because in many, if not most cases or even nearly all cases, at least 1 RCE is absolutely necessary, although thanks to an After Final Pilot program that could significantly change moving forward. Still, applicants should budget for at least 1 RCE, which also adds quite a bit to the average pendency.
Thus, if Congress were interested in studying whether we should be publishing patent applications at 18 months or keeping them secret until issuance, or secret forever if a patent never issues, then I would be all for it. That would be a useful study. Many in the industry, including myself, think the backlog issue would solve itself if patent applications were not published. Without publication major corporations would demand Congress fix the backlog problem because not knowing whether there is a patent that could pop up and ruin your business plan for 5 to 7 years is not an acceptable risk.
But to think that Congress actually came up with a good point relative to the patent system is to fail to understand the ineptitude of the body at large.
About the Scope of the Requested Comments
Before we back slap and congratulate Congress let’s take a look at what the study is actually focused on. According to the Federal Register Notice:
The Subcommittee has raised the concern of a potential risk of loss of competitive advantage during the period of time between publication and patent grant. Taking into account the current procedures through which an applicant may elect to defer publication of a patent application until patent issuance or expedite its prosecution, this Notice seeks to obtain feedback on whether the United States Government should institute a new regulatory scheme, modeled from that applied to national security concerns. This new procedure would institute a secrecy order that forbids applicants from disclosing subject matter deemed to be detrimental to national economic security for such period as the national interest requires.
If implemented not only would economically significant innovations be prevented from being patented, but incentive to pursue the most value innovations would be lost. Furthermore, use of the innovation outside the United States would be severely curtailed if not completely prevented because a secrecy order based upon national security operates in tandem with United States export control as set forth by statute in the Export Administration Regulations. Further, even if the innovation was used in the United States it could be copied and used anywhere by anyone. Therefore, this would strip all incentive to innovate economically significant innovations because if used they could be copied by others who didn’t have to spend the time, money or energy to develop in the first place. Talk about a free-rider problem! This would make economically significant innovations unattractive. They wouldn’t be pursued, which certainly won’t benefit the U.S economy.
The first of 17 specific questions asked by the USPTO was this:
Should the USPTO institute a plan to identify patent applications relating to critical technologies or technologies important to the United States economy to be placed under secrecy orders?
ANSWER: Absolutely not! This is a ridiculous idea that will strip incentive from our patent system and cause those innovations that are most useful to society to not be pursued.
The answer to the remaining 16 questions should be: “Which part of ‘no’ is confusing. This question is irrelevant because no one in their right mind would ever set up such a regime in the first place!”
Honestly, sometimes I don’t recognize America any more. I wish I could snap you out of this “Patent Twilight Zone,” but I cannot. This is the new reality. We have to so vigilantly watch those who are supposed to be working of us that it boggles the mind. If we were shareholders and the federal government were the corporation we owned we would summarily dismiss Congress for cause. This can’t be what the Founders thought would happen. Maybe it has always been like this and we are just now in the 24/7 media and Internet Age getting a good glimpse. I guess this is what was meant by the old saying about never wanting to see how two things are made — sausage and law. But still, there has to be a better way.
Before coming back to reality perhaps I will make a wish. I with that the common sense, real world approach of the Kappos Administration stops this train before it runs off the rails and into the cavernous abyss.
You may now return to your otherwise scheduled daily lives, but sadly none of out will likely be able to forget this particular Twilight Zone episode anytime soon.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.