To Truly Help the USPTO, Congress Must First Stabilize Patent Law

By Russell Slifer
October 29, 2019

As the Senate’s IP Subcommittee considers ways to fulfill its mandate to promote the useful arts this week, it’s worth stepping back to take a look at the bigger picture.

patent law scales constitutionThe United States patent system originated out of the Constitution and has been the world leader since its creation in 1790. Thomas Jefferson reviewed the first patent applications for several years until he quickly realized that the increasing demand of reviewing applications exceeded his abilities. For the next 43 years, patents were granted without any critical examination and left to the courts to determine their validity.

The difficult job of examining patent applications began in 1836. The process of evaluating a patent application, studying already known information called prior art and making a judgment of patentability remains essentially the same to this day. It took more than 100 years for the patent office to issue the first million patents. Currently, the United States Patent and Trademark Office (USPTO) examines more than 600,000 patent applications annually and issues 1 million new patents every three years. No matter how you look at this historic institution, the USPTO is a production agency with a significantly increasing volume of work.

A mission of the USPTO is to begin examination of all patent applications within 15 months and complete the process for a reasonable cost and with a high degree of accuracy. To achieve this mission, the USPTO employs close to 9,000 examiners, each having at least one degree in a scientific field and many holding multiple degrees or a Ph.D. Each of these examiners are extensively trained in U.S. patent laws and examination procedures to determine if patent protection for an invention can be granted under the current state of our patent laws. The examination process is a complex task for any invention, but especially challenging for leading edge technologies.

A Faulty Premise

The Senate Judiciary Committee’s Subcommittee on Intellectual Property is holding a hearing on October 30 to discuss the quality of patents issued by the USPTO. This hearing should be a great opportunity to discuss the current and future challenges facing the USPTO, including modernizing the software tools used by examiners. Unfortunately, the hearing title (“Promoting the Useful Arts: How can Congress prevent the issuance of poor quality patents?”) begins with the premise that there are poor quality patents and perpetuates the unsubstantiated position that past litigation abuse was due to patent quality. Perhaps a better start would have been to call the hearing “Promoting the Useful Arts: How can Congress help the USPTO improve patent examination?”

Everyone agrees that all patents issued by the USPTO should, at a minimum, meet the statutory requirements for granting a patent, including novelty and non-obviousness based on the best prior art available to the patent examiner. Some critics of the current patent system, however, argue that any patent invalidated through the courts must have been poor quality. This argument ignores the realities that available resources must always be balanced with the pursuit of perfection. The constitutional mission of promoting science and the useful arts cannot be met if it takes longer to examine patent applications than the life cycle of the underlying technology or becomes too expensive for small businesses and independent inventors. Just as the number of patent applications has increased exponentially, the vast amount of global prior art has increased with the expansion of technology around the world. In fact, litigants routinely spend 10 times the cost of patent examination just to locate new prior art to invalidate a patent.

There is no question that all production operations, from making cars to issuing patents, can be continuously improved. This is true even when a baseline measurement of quality cannot be agreed upon by all parties. Investing in better production tools, employee training, and providing appropriate examination time are key to achieving and maintaining ever increasing quality output. Likewise, production metrics must be established, measured and used to train and manage the workforce. The USPTO recognizes this and has been making substantial progress in these areas. But more can always be done.

What Congress Can Do

What can Congress do to help the USPTO to improve the USPTO operations? As a start, stabilize U.S. patent laws, especially with respect to patent eligibility. Examining patent applications is nearly impossible with ever-changing patent laws. How can an issued patent meet the requirements of the law when the courts cannot agree on the law? Then ensure that every dollar paid to the USPTO by the inventive public remains with the USPTO. It is well known that Congress and sequestration have syphoned more than a billion dollars from the agency over time. This money was needed decades ago to keep up with technology changes. Next, support, mandate or fund new production tools, such as artificial intelligence, to help the examiners find the best prior art early in the examination process. Finally, recognize that the employees of the USPTO want to lead the world in patent examination.

The Author

Russell Slifer

Russell Slifer is a Principal at Schwegman Lundberg & Woessner and the former Deputy Under Secretary of Commerce for Intellectual Property & Deputy Director of the United States Patent and Trademark Office. For more information or to contact Mr. Slifer, please visit his firm bio page.

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 12 Comments comments. Join the discussion.

  1. Anon October 29, 2019 1:39 pm

    I could not agree more.

    Thank you Russ.

  2. Pro Say October 29, 2019 3:29 pm

    As Russ says:

    1. Stabilize U.S. patent laws, especially with respect to patent eligibility.

    2. Ensure that every dollar paid to the USPTO by the inventive public remains with the USPTO.

    3. Support, mandate or fund new production tools, such as artificial intelligence.

    4. Recognize that the employees of the USPTO want to lead the world in patent examination.

    Complaints about and attacks on the conscientious, hard-working examination corp are misplaced and unfair. They’re doing the best they can with the time they have.

    Indeed, one of the steps Congress could quickly and easily take is to lift the time-consuming, unconstitutional eligibility burden from the backs of the examiners.

    Something which would save hours of examination time which could then be devoted to prior art searching.

    What’s really at play here is the continuing, un-American efforts by FAANG, other infringers, and their mouthpieces like the EFF who insist on stealing the inventions of others.

    Do not be fooled Congress.

    Do. Not. Be. Fooled.

    America can’t afford it.

  3. Paul Morinville October 29, 2019 3:57 pm

    Bad patents. Another fiction brought to you by big tech to keep the US patent system destroyed. Congress laps it up along with the big tech big bucks. This is disgusting.

    https://www.ipwatchdog.com/2018/01/30/is-a-bad-patent-really-that-bad/id=92966/

    https://www.ipwatchdog.com/2019/03/29/bad-patents-are-just-another-big-tech-false-narrative/id=107819/

  4. Paul Morinville October 29, 2019 3:59 pm

    Russ, You are right about focusing resources on the USPTO and stabilizing patent law. You missed one of the most devastating parts of the broken system, the PTAB. That must also be eliminated. Send the corrupt government employees that call themselves “judges” packing.

  5. MaxDrei October 29, 2019 5:26 pm

    Is that it? A mere exhortation to “stabilize” the patent statute? Does that pass for wisdom? I think not. The writer should have borne in mind the advice of Mark twain, and should have refrained from posting the piece. If the writer, Principal and former DUSC, has no clue how to achieve that worthy aim, how does he expect other, less specialised politicians, to do it.

    So far, all suggestions how to tinker with the wording of 35 USC 101 will make the situation worse, not better. Advocating more of the same is tantamount to irresponsibility.

    That the PTO owner syphons off funds is a world-wide problem, and a distraction. The owners can’t stop themselves putting their hands in the till. It’s that or raise taxes elsewhere. It hasn’t (yet) de-stabilized the EPO.

  6. Anon October 29, 2019 7:06 pm

    So far, all suggestions how to tinker with the wording of 35 USC 101 will make the situation worse, not better. Advocating more of the same is tantamount to irresponsibility

    To use your own words:

    Is that it? A mere exhortation?

    Irresponsible to notice that the score board is broken and that the US Supreme Court has acted out of line with its own scrivining and legislating from the Bench?

    I would say quite the opposite.

    Your view of “raise taxes elsewhere” is also quite out of touch with US practice.

    Maybe you yourself should heed Mr. Twain.

  7. angry dude October 30, 2019 10:17 am

    Patent “law” right is no law at all.. but that’s probably not the biggest problem with USPTO
    I was advocating for years that examiners should be allowed to spend more time on patent applications, especially on difficult ones involving advanced math like video compression etc.
    This would incur raising PTO examination fees and that’s ok – patent attorney’s fees are currently many times higher than PTO fees
    Nobody want a worthless patent so I’d rather pay 10K to PTO for proper examination but have presumption of validity
    A small window should be left open to challenge issued patents after issue BUT only on new prior art previously not cited and ONLY on novelty and enablement, not obviousness
    Obviousness has to be decided by the PTO right at the get go:
    everything becomes obvious 10-20 years later to new generation of patent examiners

    Alas, no gonna happen (other than raising PTO fees to siphon surplus money elsewhere)

    The US Patent System is on the last stretch of its existence
    To the morgue…

  8. BP October 30, 2019 11:57 am

    “When logic and proportion have fallen sloppy dead”

    The “contractions” are not a consequence of “irrational exuberance”. The “asset value” of patents was not inflated; rather, the real value was a nuisance to illegal monopolies.

    Federal district court judges motivated by the illegal monopolies distorted Alice, an expedient to clear their dockets of patent cases. The Fed Cir fueled the fire.

    Politicians hear “patent troll”, “patent quality”, and “bad patents” as calls to get on the illegal monopoly gravy train.

    The problem is Crystal City clear and so is the solution. Unfortunately, the courts and politicians lack the integrity to effectuate it.

  9. Concerned October 30, 2019 12:30 pm

    BP:

    Nice “white rabbit” you pulled out.

    Now go ask Alice if the judicial exceptions made the inventor’s pockets small or the monopolies pockets’ larger since the current exceptions don’t do anything helpful at all.

  10. BP October 30, 2019 3:57 pm

    @9 Concerned, good one you got there too, I could use a pill.

    As the illegal “tech” monopolies consolidated markets (vertical and horizontal) and increased rents/profits (and caused other market distortions), we should have seen new entrants, especially those supported by patent rights.

    Are elements of the Noerr-Pennington Doctrine at play? The illegal monopolies have joined together to employ both judicial and regulatory processes to share costs to decrease their individual burdens such that the federal courts, the USPTO, independent inventors, advertisers, small businesses, consumers and taxpayers have born significant costs.

    The illegal monopolies are winning/have won. They have employed judicial and regulatory processes to significantly increase risks and costs of actual and potential rivals. Mere “chump change” has bought corrupt academics, “think tanks”, judges and politicians. Evading RICO under Noerr-Pennington . . . .

    As to Noerr-Pennington Doctrine in context see ABA Monograph 18: Nonprice Predation Under Section 2 of the Sherman Act, Volume 18, Issue 4.

  11. Disenfranchised Patent Owner October 30, 2019 10:59 pm

    Paul @ 4: I agree wholeheartedly.

    When a patent portfolio has been the subject of litigation many times over, and accused infringers — huge multinational companies — have all settled amicably, shouldn’t that tell the PTAB something? However, the PTAB can easily ignore or thwart secondary consideration arguments, and/or justify findings of obviousness by fabricating missing claim elements in cumulative (if not identical) prior art to that which was examined during prosecution. The PTAB can also rely solely on petitioners’ experts, and ignore patent owners’ experts, although this was easier before Madam Lee’s original rules were changed to permit patent owners to submit expert testimony prior to a decision to institute.

    Is this unfair? Of course not! How else can kangaroos ensure their own job security?

  12. Sugouri November 7, 2019 6:18 pm

    Tailor exclusivity term to industry.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website