Mar
31
Dudas on the state of patent system
Posted by Dirk Avery at 10:51 am under Legislation, Patent.
Patent Commissioner Jon Dudas spoke with CNET about the patent system over the weekend at the Tech Policy Summit in Hollywood, California. Here are some interesting excerpts from Anne Broache’s report:
“Software, biotechnology, business methods–In the United States, the Supreme Court has consistently held that those are areas where there should be patents, and those industries have flourished.
“Specifically with open source, I think the two should coexist very well. If someone gets a patent, then that intellectual property has to be respected, but so long as that patent isn’t used, open source can be as open as it needs to be. You can license some (patents) and not license others. There are some who feel by definition you should only have open source or only have a patented model. The administration’s position has always been that…both open source and patents help innovation thrive.”
On business method patents: “We essentially said, we shouldn’t base whether or not something is patentable on what type of technology it is or even what kind of method it is…so long as it’s new, useful, and nonobvious…”
On “so-called” patent trolls…: “It depends on how someone defines a patent troll. ‘Patent troll’ is meant to be a pejorative term… Certainly, someone who comes up with a great idea and licenses it, that’s a very efficient way to do it.”
On gripes by large technology companies that patent infringement fines are too high: “The administration has said we do think judges could give better guidance to juries. We definitely feel that in the case of damages, it would be good if judges could give very specific guidance to juries…
On weeding out “bad” patents from the get-go: “Making sure applicants can give good information up front…will lead to a much better patent system–more than anything else. (The Patent Office is proposing that applicants) do a basic [prior art] search… and short report… why their invention should be patented.
“In 27 percent of cases, nothing is submitted in terms of prior art. In another 17 or 18 percent of cases, people just give us a long list of references…”
On reducing in-court patent litigation: “The administration proposed post-grant review… It has to be a true alternative to litigation… The standard we’ve held is that there should be a threshold in order to get a post-grant review, an actual threat of litigation.
“The second thing–this is the critical point–if you choose to go to post-grant review, any issue you raise or could’ve raised, you have to raise there, or you can’t raise it again. You don’t want an innovator to have hurdle after hurdle after hurdle after they’ve gotten a patent…”
On handling a flood of patent applications: “[H]iring more examiners in and of itself won’t be the solution…
“What we really need to do is get higher quality applications. The allowance rate, those applications that are approved, used to hover between 62 and 72 percent, back 35 to 40 years ago. In the last 6 years, it went up to 72 percent in 2000, then dropped steadily down to a 43 percent allowance rate. So what we see is 57 percent of what comes in the door doesn’t lead to a patent. ”
On the long line to get a patent–and how some may game the system: … “We want to make certain that people can’t apply with a very broad patent application, which they know will get rejected. And then they get back in line, and meanwhile, they’re looking out and seeing what’s happening in the market. Sometimes they see that if they focused that broad claim, it could cover an existing technology… Then, (going by) the date of first filing, they can then say, ‘I own that technology’… That’s a very real concern. That gets more in line with concerns of troll behavior–someone who is literally watching the technology…so they can rise up out of the bridge and sue people.”
Related
- Practitioners respond to rejection of new rules
- UPDATE: Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas, 07–cv-0846 (E.D.Va 2007)
On handling a flood of patent applications: I agree that hiring more examiners, by itself, won’t help. But the Final Rules (currently subject to a preliminary injunction) seem to focus less on provoking “higher quality applications” and more on receiving *fewer* applications generally. Is it really application quality? Or simply the overwhelming backlog? Or continuation abuse? They need to decide if they want to convince a court that the Rules are not arbitrary or capricious. So far, I’m not convinced.
On the long line to get a patent–and how some may game the system: what about 112? If an applicant’s “very broad” application sufficiently supports existing technology, why should we say they don’t possess the invention and have no rights to a patent? If they are really searching the market for something new, they probably can’t support it, I would think.