Bias in Both Directions: Patent Reform Should Protect Both Accused Infringers and Inventors

By Kip Werking
December 8, 2015

Patent reform is popular today, whether it comes from Congress, the courts, the White House, or Patent Office regulations and guidance. Yet the term “patent reform,” by itself, is misleading, because virtually all of the reform today only improves the patent system in one direction: protecting accused infringers and weakening patent rights. Consider the following recent reforms:

  • removing the ability of the first inventor to claim priority over a later inventor who files first;
  • creating several new post grant proceedings at the Patent Office, which have been wildly popular, reducing the cost of challenging patent validity by an order of magnitude, and earning the Patent Trial and Appeal Board the name of a “death squad,” a name which the Board’s former Chief Judge describes as somewhat accurate;
  • creating a mechanism for third parties to challenge patent applications during examination;
  • reinvigorating, in a string of recent decisions, old judicial exceptions to patentable subject matter, which resulted in an entire new cottage industry for defeating patents without a trial and without traditional consideration of the prior art;
  • lowering the standard for invalidating a patent under the indefiniteness doctrine;
  • repealing a new judicial rule intended to prevent infringers from escaping liability based on technicalities due to divided infringement;
  • placing the burden on the patent owner to prove infringement, even if the potential infringer hailed the patent owner into court through a declaratory judgment action;
  • affirming a broader interpretation of the patent exhaustion doctrine;
  • limiting the ability to enforce patents against those who supply components with the intention of inducing infringement;
  • slowly eroding the doctrine of equivalents until it is virtually impossible for a patent owner to successfully use the doctrine in court;
  • dramatically lowering the standard for invalidating a patent as obvious without a trial;
  • allowing a licensee to sue for declaratory judgment of patent invalidity without breaching the license;
  • dramatically increasing the difficulty for a winning patent owner to obtain a permanent injunction.

The first three come from the America Invents Act in 2011. The rest generally track the anti-patent decisions of the Supreme Court since about 2006. You can find a complete list of these decisions here. By my conservative count, since 2006, the Supreme Court has issued 14 anti-patent decisions, 4 pro-patent decisions, and 8 relatively patent-neutral decisions. This trend began with the rise of the Roberts court, in contrast to the Rehnquist court, which generally left alone a new Federal Circuit that Congress created to unify and strengthen the patent system.

In view of the above, the fan of patent reform might rejoice. The fan might observe that these reforms correct genuine problems with bad patents and patent trolls. I can agree with the fan of patent reform that these reforms help correct many real problems with the patent system. In other words, I believe that the patent system was biased in favor of patent owners along a number of dimensions (and arguably still is).

Where I disagree with the fan of patent reform is that I also believe that the patent system is biased against innocent inventors along a number of (different) dimensions. Consider whether the following strikes you as fair to the solo inventor working on an invention in her garage:

  • Experts have concluded that as many as 54% of patents are “worthless.”
  • It costs about $2-4 million dollars to successfully enforce a valid patent through trial.
  • Patents are so weak now that some law professors generally recommend that accused infringers simply ignore demand letters.
  • Patent owners lose the strong majority of their cases and the number of ways to prove a patent invalid has increased dramatically over the last 150 years.
  • Moreover, although an accused infringer only needs to succeed on one argument to win, a patent owner must succeed on all arguments (i.e., infringement and each separate invalidity argument), for each different defendant, lawsuit after lawsuit, or else the patent owner loses and the patent becomes worthless.
  • In practice, the courts, and sometimes Congress, make patent reform retroactive after companies have already invested millions of dollars securing large patent portfolios, effectively undermining the value of these portfolios in a kind of ex post facto government taking.
  • The legal standard for obviousness is defined in terms that are extremely unrealistic and unfavorable to inventors. Instead of considering what was actually obvious to a flesh and blood human being, the courts consider what was obvious to a quasi-omniscient, robot-like fictitious character who magically knows about every relevant prior art reference in existence, no matter how obscure the reference is.
  • Although the courts pay lip service to the concept of hindsight bias in evaluating obviousness, multiple studies show that the courts and juries systematically fail to overcome hindsight bias. When mock juries are given prior art without access to the patent, they systematically fail to reproduce the invention.
  • Even when patent owners win in court, they are routinely denied a permanent injunction against infringement and instead are forced to accept a compulsory license that has less financial value. Moreover, patent owners may not be able to recover their full damages if the infringing product uses thousands of different inventions, thereby obscuring the issue of causation in the damages analysis.
  • The new Patent Office proceedings routinely revoke patents without the traditional and constitutional protection of a jury, much less a presumption of validity or a non-political Article III judge with a guaranteed salary and life tenure. The Patent Office does not presume that patents are valid even though the Office forced the applicants to go through a lengthy and expensive examination process to prove their validity. Similarly, the Patent Office forces the patent owner to defend the patent under a lower standard of evidence and a broader standard of claim construction than the traditional standard used in court.
  • In view of the previous point, a patent owner can prevail in court to obtain a multimillion dollar reward and then have the award voided by an administrative proceeding at the Patent Office.
  • It costs about $25,000 to prepare, file, and prosecute a patent application to allowance, and this cost can vary significantly depending on the Examiner, art unit, and appellate process (by contrast, copyrights are free and obtained instantaneously).
  • The Patent Trial and Appeal Board has a backlog of about 22,000 appeals, resulting in an average appeal pendency of about three years.
  • Quality review at the Patent Office focuses almost exclusively on preventing bad allowances. There are arguably no corresponding internal procedures to review and prevent widespread bad rejections by examiners and the resulting cost on the American business and innovation community.

What’s stunning about this list is that almost nobody talks about reforming patent law to correct these biases! In general, the only biases that are socially and politically acceptable to correct are biases in favor of patent owners.

scales-justice-erase-copyMy final point should be obvious: it is profoundly unfair to correct biases in the patent system to protect accused infringers if we do not also correct biases in the patent system to protect inventors. Moreover, in making this point, the defender of inventors can agree that modern patent reform corrected many biases that favored patent owners. But we can’t stop there. If the patent system is biased in dozens of ways, then we can’t just correct the ways that favor inventors. After all, many of these biases will cancel each other out. A bias that favors inventors can be canceled out (to some extent) by a bias that favors accused infringers (and vice versa). Moreover, these two biases might not have anything to do with each other. For example, the bias of ex parte prosecution favors inventors, but this bias is canceled out (to some extent) by the unrealistically low standard for obviousness that favors accused infringers.

It is interesting to ask why modern patent reform overwhelmingly protects accused infringers without also protecting inventors. One popular explanation is that the Federal Circuit took its Congressional mandate too strongly, and ended up strengthening patents too much, so modern patent reform simply brings the system back closer to a fair equilibrium. An alternative explanation is that big established corporations like Google have partly outgrown their need for patents and now have a disproportionate influence on Congress and the courts (with the deep pockets to afford the best lawyers and lobbyists). Google no longer needs its Page Rank patent to thrive, even if the solo inventor in a garage still needs patent protection. Personally, if I had to speculate, I worry that the patent reform asymmetry fits within a larger trend of decline in the great Western traditions of innovation, due process, meritocratic competition in the race to invent, reliance on property rights and business investments, and strong support for intellectual property as distinct from real and personal property. Ultimately, I can’t be sure what the real causal explanation is. Yet, regardless of one’s political views, the reader can still see that modern patent reform is unfairly asymmetric (due to the numerous examples that I cite above).

Patent reform itself is not a bad idea. But patent reform should protect innocent inventors as much as innocent accused infringers. Patent law is biased in both directions. Recently, patent reform has corrected many biases to better protect accused infringers. But we still have a long way to go to correct many other biases to better protect America’s inventors.

The Author

Kip Werking

Kip Werking is a registered patent attorney with ALG Intellectual Property, LLC who has a wealth of patent-prosecution experience in the electrical and computer-engineering arts. Throughout his career, Mr. Werking has participated in all aspects of U.S. patent prosecution, including hundreds of in-person examiner interviews at the U.S. Patent & Trademark Office, appeals, and personal appearances before the Board of Patent Appeals and Interferences.

Prior to joining ALG, Mr. Werking practiced as a patent attorney with a nationally recognized law firm in Alexandria, Virginia. Mr. Werking also clerked for the International Trade Commission in Washington, D.C.

Professional Activities
Registered Patent Attorney, U.S. Patent & Trademark Office
Member, Virginia State Bar (Inactive Status)

Education
William & Mary School of Law, J.D.
Graduate Fellow
The University of Texas at Austin, B.S
Electrical Engineering
National Merit Scholar
Engineering Scholar

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. JNG December 8, 2015 12:01 pm

    Excellent piece, right on point

    I’ve been in patents since 1985 and I find the current environment the most toxic anti-patent in that entire time span. To me the biggest problem is corporate lobbying at all levels of the system, which means you have faux academics publishing puff pieces to promote anti-patent agendas, giving it an aura of academic legitimacy/neutrality. For example, when I reviewed a recent Amicus brief to the SCOTUS advocating a position for Google, no less than 2/3 of the academic signatories had received $ or benefitted in some way from association with Google. Its an ethical disgrace amplified by easy corporate $$. The fuel for all of this, too, is the fact that it is now much cheaper to pay lawyers than royalties to patent owners, and the former have figured this out too and direct their client’s actions accordingly.

  2. staff December 8, 2015 4:05 pm

    ‘“patent reform,” by itself, is misleading, because virtually all of the reform today only improves the patent system in one direction: protecting accused infringers and weakening patent rights.’

    Weakening property rights is fundamentally unAmerican and a disgrace. Should property rights only be for the wealthy and politically well connected?

  3. Edward Heller December 9, 2015 7:32 am

    Would not it be nice if we had a patent system where claims were clear, the standard for invention precise and objective and not subject to the opinion of some expert about what a hypothetical person would think; where if one did not take out a license in the face of a notice of infringement and ultimately lost in court that there would be an automatic award of treble damages and attorneys and fees to the patent owner, and where ongoing infringement was considered irreparable harm without more?

  4. Benny December 9, 2015 7:37 am

    “even if the solo inventor in a garage still needs patent protection…”
    Have you ever met one of these semi-mythical beasts who has come forward with a commercially viable invention? Nearly all useful innovation is the product of companies or universities who can afford to invest heavily in R&D.

  5. staff December 9, 2015 12:50 pm

    ‘“patent reform,” by itself, is misleading, because virtually all of the reform today only improves the patent system in one direction: protecting accused infringers and weakening patent rights.’

    Weakening property rights is fundamentally unAmerican and a disgrace. Should property rights only be for the wealthy and politically well connected?

    For more information please visit us at https://aminventorsforjustice.wordpress.com/
    or, contact us at tifj@mail.com

  6. Syndrome Banerjee December 11, 2015 1:46 am

    “removing the ability of the first inventor to claim priority over a later inventor who files first;”

    Isn’t it totally opposite. The USPTO follows first to invent rather than first to file. The non obviousness criteria is something that helps an inventor to claim over the invention even if he hasn’t filed first.

  7. Gene Quinn December 11, 2015 11:13 am

    Syndrome-

    Not any more. The America Invents Act changed everything. For applications treated under AIA it no longer matters when the applicant invented. It only matters who filed first, with only the most narrow of exception in the event where someone learned of the invention from the inventor and then beat the inventor to the patent office.

  8. Anon December 11, 2015 12:23 pm

    Gene,

    Would it cloud the issue to point out the “trap” in that if the first filer in your example can nullify the ability of anyone to obtain a patent if that first filer includes an item of further invention that is merely obvious (but not “derivative”) of the first actual inventor?

    While this has not been vetted in a court of law (yet), the most direct reading of the emasculated one year buffer protection prevents BOTH parties from obtaining a patent because each party serves as a source of obvious rejection to the other.

    The second inventor/first filer’s portion that is different, but obvious remains a block of obviousness, while the first inventor/second filer places a block of obviousness in the way of the first filer.

    No one “wins.”

    Except maybe those who obtain the benefit of both (enjoys the taken quo) with no payment of quid to any inventor.

    In a subtle and nuanced manner, what this does do is stress the importance of BOTH filing quickly AND requesting non-publication as a default.

    It should be remembered that requests for non-publication are NOT permanent, and can be relinquished at a later time when actions, such as filing abroad, are actually taken within the (still protected) year time frame.

    In essence, it is still possible to adhere somewhat closely to the original quid pro quo deal of a patent for a disclosure even in the face of the (rather implicitly “sneaky”) attempts to have near-immediate publication and taking of quo with but a “promise” of maybe-quid.