Hal Wegner:

Lost in the microscopic focus on the "second window" debates over post-grant review is the larger picture that, unlike the legal systems of the United Kingdom, Germany and Japan, the United States of America lacks a guarantee for patent litigants that they will receive a prompt, speedy and efficient patent trial. To be sure, there are roughly ten or so District Courts with premium patent jurisprudence, on a par with any other system in the world. Yet, there are more than eighty other District Courts where it is all too often the case that an otherwise highly experienced trial judge confronts a patent case for the very first time, or only very occasionally hears a patent case.

It would be insightful to know the percent of district court rulings overturned with a judges' patent case experience factored in. That would provide empirical evidence to back the import of Hal's assertion.

The general business press provides a constant drumbeat that the standard of patentability is too low when, in fact, dual causes of greater significance are (a) the random grant of bad "gas pedal" patents - that can happen in any system - coupled with (b) the absence of a judicial system that permits their reliable elimination when the case is heard outside the ten or so patent-experienced venues. No matter how much higher the standard of patentability may be set in [the upcoming Supreme Court ruling in] KSR [v. Teleflex], this will have nothing to do in the end with the day to day gristmill of patent examination: "Gas pedal" patents will continue to be issued. The question then is how will they be eliminated under any standard of patentability, absent judicial reform?

The most important patent reforms needed are thus neither in a post-grant or any other PTO proceeding, but rather promptly fashioning a way to focus all patent cases in courts where there are patent-experienced judges.

Comparative Models, Meeting the Challenge in Europe and Japan: The problems faced by the United States today are hardly unique for the generalist judges that populate the trial courts around the world. The difference between the United States and leading foreign countries is that Germany, the U.K. and Japan have each separately made major reforms that are working quite well to provide prompt, efficient, predictable and reliable patent justice where the trial courts have judges with a general background. It is worthwhile studying these comparative models, to see precisely how better results have been achieved abroad:

The British Model: The chambers of the High Court that hear patent matters have as emeriti Lord Leonard Hoffmann, Lord David Neuberger and Lord Justice Robin Jacob, all with distinguished patent trial records before their elevation to the appellate bench and (in the case of the former two) further elevation to the House of Lords. Prompt, efficient and well thought out patent trial decisions continue in this tradition, penned by Sir Nicholas Pumfrey and Sir David Kitchin.

The German Model: The Düsseldorf Landgericht stands out as the example of the single most popular court for patents anywhere in Europe and perhaps in the world, thanks to the fact that generalist judges have been channeled into specialized divisions that now exclusively deal with intellectual property matters. To permit a sufficient volume of patent work amongst the several Landgerichte with patent jurisdiction, they share exclusive trial level jurisdiction as a minority of all the Landgerichte in Germany. (On top of this, validity is separately considered in a Nichtigkeitsklage at the Bundespatentgericht, a technically specialized patent court with exclusive jurisdiction for patent validity consideration. )

The Japanese Model: Very similar to the German system, the Tokyo and Osaka District Courts, alone, share exclusive patent trial jurisdiction with generalist judges sitting in specialized chambers exclusive to intellectual property matters, hearing both infringement and validity issues. Additionally, research staff comprised largely of former Patent Examiners provide technological muscle to help with the most complex biotechnology, electronics, software and other technologies. (And, Japan also offers a parallel administrative patent revocation throughout the life of the patent under a streamlined procedure that has been available since 2004.)

Post-Grant Review as a Stop-Gap Measure: Until Congress and the Administrative Office figures out a solution to channel all patent cases to patent-experienced judges either through a sui generis solution or mixed together with bits and pieces of the successful models from Germany, the U.K. and Japan, it is imperative that a "second window" post-grant procedure be available to deal with the very real challenge from eBay, MedImmune, KSR and Metabolite.

While this commenter agrees on a specialized patent court, the lack of quick or sure adjudication in the U.S. does not bolster the illogic of an additional post-grant procedure. Hal Wegner: "Whereas Germany, the United Kingdom and Japan each has a judicial or administrative proceeding for review of patents after grant that is cheap, effective, reliable and prompt, the United States lacks a parallel mechanism." But, acheiving the ideal of "cheap, fast, & good" aside, the U.S. does have a parallel mechanism: ex parte reexamination; so, in fact, there already is a post-grant procedure in the U.S.

The problem, if there is one, is that the source of the problem, in granting the patent in the first place, the USPTO, is called in to fix its own mistake. Hal Wegner: "It is imperative that the authority for dealing with "cancellation" or any other post-grant review be under the authority of a body other than the PTO." But there is something distinctly weird about mistrusting the patent office to not give it a chance to correct its mistakes. If the agency is that badly broken (it isn't), then fix it, rather than take from its core responsibility (patent examination). The fact is that patent examination is much more stringent now than it has been in at least the past twenty years, owing to political pressure, most especially the computer industry's ceaseless cry for patent reform to its liking, precisely intended to denigrate the patent grant. If there's something seriously wrong with the patent agency, the fix is nothing more than hiring better management.

Two problems with yet another post-grant review: (1) it practically destroys the presumption of validity; in other words, it renders a patent grant next-to worthless, which has tremendous repercussions towards any valuation or real use of a patent, for venture capital or business funding reasons, or enforcement; (2) it creates a new institution to fix what is perceived as two existing broken institutions: the patent office, and the court system. If that's not a cluster bungle formula, I don't know what is. Institutions, once established, are fiendishly difficult to destruct, as vested interests always grow inured, ready to apply political leverage for life support. So many government programs live on far beyond their useful lives. Better to fix what's broken than risk creating a trinity of dysfunctionality.