Mea Culpa, Patent Reform and Other Issues

I confess, it was me who fed Gene Quinn the erroneous info about Steve Kunin heading back the US PTO. I made an erroneous assumption when, in casual conversation with Steve at a Vail, Colorado CLE event, I asked Steve whether he was in touch with the Obama transition team and whether this might lead to his certain appointment as the next Director of the US PTO. Sadly, he indicated that that was not a likely outcome (no matter how much I wished for it) and besides, he was busy heading up a Rexam/Reissue assignment. My mind instantly leaped to the problematic issues in the PTO regarding Reexams (timeliness anyone), and I thought to myself, “well, not too bad, at least we’ll have some real talent inside the PTO helping out in an area that needs help.” Of course, Steve could not read my mind and could not correct my incorrect leap of hope about him back at the PTO thoughtfully solving problems. And, inasmuch as I did not share my thought with Steve in an audible fashion, he had no shot at correcting me there either. I then shared my incorrect thought/hope with Gene who, equally happy at such an outcome, merrily posted the incorrect information I had provided. So….it’s my fault, and I am sorry to have had such a leap of hope and faith that real talent would migrate back to the PTO to get the agency back on track to its Constitutional mission. I think my plan, now, is to genetically re-create terrific PTO talent from the past, and somehow get them appointed to the US PTO.

Okay, I know I am beginning to sound a little crazy, but it is dismaying to me the lack of attention the patent world receives from those who ought to care. Every politician of every stripe and at every level jabbers on about “innovation” and how that particular part of the American creed will help lead us from the mess we’re in. Well, folks, the keeper of the innovation flame, i.e., the PTO, the statute they operate under, the rules they write, and the various Courts trying to back stop the process, need some help; and fast. The back log is huge, KSR is an abomination, and rule making is stuck in an enjoined rut. Thoughtful, patent capable, people – without an axe to grind for some industry or particular institution or political world view – need to come forward with good ideas and broadly applicable solutions to get things moving again on the innovation and protection front.

Now before you start with all of these worthy committee chairs at all these various law and I.P. owners associations, etc., I have a question for you; to wit: where have they been for the past 5-6 years while the system has sunk so far into the mud? Having Annual and Semi-Annual meetings, I suppose. The system plainly needs more than these noble volunteer efforts have the capacity to muster. This will be full-time for several years. Here is a run down:

The publish and comment rule making system is broken. The last round of rules received huge input coming back in the form of comments. It did not matter, did it. The awful Rules were made final and enjoined in the nick-o-time. Even OMB has gotten into the act to stop the PTO! (Good grief; what next?) The PTO needs people “inside” who have operated “outside” and who know the ramifications of operating under the PTO rules. The PTO customers are not the “problem.” Every business should be as over subscribed as the Patent Office. Fewer, simpler, more comprehensible rules are needed. Re-write 37 CFR just about from end-to-end.

Statutory reform: the debate has become so shrill and polarized as to be useless. Purposely misleadingly labelled lobbying groups (Coalition for what?????!!!) talk past each other in front of well intended politicians who are lost as to what to do. The “sure thing” from 2005 has, year-by-year, become less of a sure thing to where now it is unclear if, given other more pressing items for the Congress to work on, it will receive any attention at all. We need the statute to be tweaked, not wholesale re-written. If necessary, add some more tweaks down the road. Start with Obviousness (codify TSM) and move on to Inequitable Conduct (codify Rule 56), as Gene suggested in a recent post. Then work on damages and special courts in each District just for patent cases. Patent Judges need to assess validity and infringement, damages and economic contribution can be handed to the District Courts if it gets that far.

In the meantime, the Supreme Court has been captured, by a fawning academia and insular Supreme Court bar, and told, shockingly, that the patent bar ignores their precedent (rightly so in some cases, I might add). The SCOTUS contribution to the current mess is KSR which neatly and completely dispatches 30+ years of richly nuanced, carefully developed, CCPA and CAFC jurisprudence on the most difficult to apply aspect of the patent statute: obviousness. It’s as if we’ve had all of our cell phones and Blackberrys taken from us and we’ve been sent back to smoke signals on Obviousness. It has truly come to this: If you try something because you think it will work and it does, no patent for you. What you did, and the rationale for doing it, was common sense. But, on the other hand, if you try something thinking it will fail and it doesn’t; well done, you get a patent. No common sense here. Gobble-de-gook anyone? Who tries things they believe will fail? Patents have been simultaneously made much more difficult to obtain and worth much, much less. Great, just great. Where is the incentive to innovate in this mess? Well, pretty clearly, whatever incentive there was is rapidly being drained away. The PTO back-log is making patents commercially irrelevant for many industries. By the time the patent is awarded, the worth of the patent has been lost and any edge it might have provided against competition severly blunted. KSR is making a mockery of arguments during examination and has made enforcement a game of roulette.

This is a call to action: Contact those whom you know in the new administration and plead with them for the appointment of top quality patent know how to lead the PTO. Next, fund think tank efforts to propose non-partisan reasonable solutions we can all get behind and explain to our clients (innovators). This needs to be a top priority right now. No waiting. Our innovators will lose interest if they have not already done so. Use whatever argument you have to use, the patent system is way, way too important to fail.

About the Author

John M. White
US Patent Attorney
Berenato, White & Stavish, LLC

Education:

B.S. in Civil Engineering, Virginia Tech University
J.D., George Washington University Law School