It is that time of the year when everyone makes their resolutions, most of which are sure to be broken almost immediately in most cases, particularly when the resolution deals with losing weight or exercising. Not to be deterred, I have made both of those resolutions myself and I am cautiously optimistic about the likelihood that I will stay the course and make it happen this year. Albert Einstein once said that the definition of insanity is doing the same thing over and over again and expecting different results, so all of us who are making resolutions likely know the reality of what is in front of us, but we do it all the same because at this time of the year hope springs eternal and for at least a few days we can believe that things will be different in the new year ahead. Hope is a wonderful thing and I am filled with hope for my personal circumstance, but also full of hope that 2009 might actually be the year that the US patent system turns the corner and we start to rebuild, rising like a phoenix from the ashes. With this in mind, here are my patent wishes for the new year. Most are probably as likely to happen as my keeping my own resolutions, but you need to start with hope and then have belief and an amount of hard work and anything is possible, right?
1. I hope that President-elect Obama appoints someone to be Undersecretary of Commerce for Intellectual Property (also known as the Director of the USPTO) who is actually familiar with the patent system. I do understand that it is the United States PATENT and TRADEMARK Office, but the fact of the matter is that the Trademark side of the Office seems to be running pretty smoothly, without any real hitches. People apply for a trademark, go through the process and are awarded trademarks. There is none of the funny business going on on that side of the building. On the other hand, the Patent Office side of the building is in complete and total disarray. At the end of fiscal year 2008 there were over 1.2 million patent applications still pending and there are reports that entire Art Groups refuse to issue any patents because they are afraid of getting negative quality review assessments. The Dudas Administration has also spent the better part of 3 years pursuing reforms that were ill conceived, would have been horribly detrimental to the patent system and all of which have stalled thanks to court intervention or the intervention of the Office of Management & Budget. So what we need is someone who understands the patent system, someone who has hopefully spent time in the Patent Office and has come out of the Office and into private practice and understands the process from both points of view. That is why my favorite candidate is Stephen Kunin. The rumor is that he has also been cancelling speaking engagements in the first quarter of 2009, which could mean he is on the short list. This would be a great Obama appointment.
2. I wish that Congress would get on the ball and realize that listening to the Coalition for Patent Fairness, which really ought to be called the Coalition for Patent Infringement, is not the way to move forward with meaningful and thoughtful patent reform. Reforms that help only one industry and attack every other industry, and which would completely kill pharma and bio-tech, is not only ill-conceived but flat out stupid. For better or worse our patent system is a one-size-fits-all patent system. I do not see that changing any time soon, although talking about moving away from a one-size-fits-all patent system would be wise. It would require wholesale changes, and I don’t really believe that will happen, so what I am wishing for is that Congress start with those items virtually all of us can agree on. For example, the Federal Circuit refuses to accept the Patent Office’s definition of the duty of candor expected when attempting to obtain a patent. This is crazy really. Why should the Federal Circuit define what constitutes fraud on the Patent Office? Shouldn’t the Patent Office define what they expect? Of course they should, and Congress should immediately enact 37 CFR 1.56 and make it a part of the patent laws in Title 35 of the United States Code. This would force the Federal Circuit to accept the PTO definition, it would give attorneys and applications knowledge of what is required, and it would allow the PTO and the Patent Bar to engage in meaningful discussions that would lead to new rules that should address the growing patent crisis. It is not an overstatement at all to say that the duty of candor and inequitable conduct is what is getting in the way of thoughtful, working reforms at the Patent Office.
3. I would also like to see Congress legislate away the Supreme Court’s decision in KSR v. Teleflex. The US Supreme Court knows little or nothing about patent law, and the KSR decision has only lead to less certainty. If the Patent Office and the Federal Courts actually follow what the Supreme Court said in KSR then no inventions are patentable any more… PERIOD! In order to satisfy the KSR test you actually need to show that there was no reason that you or anyone else could have ever in a million years considered doing what you did. If anyone would have considered trying what the inventor tried then whatever the outcome is would be obvious and no patent could be issued. So you can get patents when your efforts have no reasonable or believable chance of success. That is recklessly stupid and simply cannot be the rule. Thankfully, it seems that the Patent Office, for the most part, is ignoring KSR, as are the district courts and the Federal Circuit. From time to time the Patent Office and the courts do actually follow KSR, so there can be no certainty. It is very difficult to advise clients other than to tell them what KSR says and that if it is followed you have little or no chance. We simply cannot tolerate this kind of ridiculous and unnecessary uncertainty and double standards. Congress needs to amend 35 USC 103 and require the teaching, suggestion and motivation test as the way to determine if an invention is obvious.
4. I wish that the Patent Office would actually enforce 37 CFR 11.5, which says that in order to do any work on the preparation and/or filing of a patent application or trademark application you must be an attorney admitted to a state bar (in the case of trademarks) or a patent attorney or patent agent who has passed the Patent Bar Examination (in the case of patents). Right now the Office of Enrollment and Discipline knows that there are many, particularly on the trademark side of the building, that are advising clients, preparing trademark applications and filing trademark applications when they are not attorneys. They also know that there have been many applications prepared, filed and prosecuted on the patent side of the building by people who are not patent attorneys, not patent agents, and not inventors or co-inventors. Yet, OED does nothing to stop this unauthorized practice of law because they feel it is the obligation of State Attorney Generals to enforce USPTO rules. To the contrary, I believe it is the responsibility of the USPTO to enforce their own rules and when they know that there are those violating Rule 11.5 they need to take action. By not taking any action on the patent side they are allowing every inventor who falls prey to these scam artists to file applications that will never lead to a useful patent. The reason is because when there is a fraud on the Patent Office any patent the issues is unenforceable. So all those who file any patent applications who are not patent attorneys, patent agents or inventors are causing immediate and irreparable harm to those they are allegedly trying to help. The fact that the Patent Office would stand by and know this irreparable injury is ongoing and they are doing nothing is criminal in my mind.
5. Finally, I wish that whoever is appointed to run the Patent Office will withdraw the claims and continuations rules prior to the Federal Circuit issuing its decision in the GlaxoSmithKline – Tafas appeal. We all know that GSK and Tafas are going to prevail, and the opinion that will almost certainly be written by Judge Rader will do nothing other than affirm Judge Cacheris’ decision. The trouble is that when Rader issues the decision it will be a Court of Appeals decision and will carry far more weight than a district court decision in terms of precedent. It is reckless to allow such a precedent to exist because it will not only expose the Patent Office’s shortcomings, but it will become a significant hurdle to justifiable rulemaking at every agency in the Federal Government. If the Patent Office does not withdraw the rules and thereby moot the appeal I hope that Judge Rader, joined by Judges Bryson and Prost stick it to the Patent Office!
There is so much more that I could wish, like the Coalition for Patent Fairness finally understanding the error of their ways, that the Federal Circuit will reconsider Bilski or even that I get appointed to the Federal Circuit or as Director of the Patent Office, but while it is nice to dream these things just aren’t going to happen. So lets stick with the things that have a chance, but there is no harm in dreaming, right?
Happy New Year everyone!
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide