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June 6, 2007

Do Some Work For Us

Patent office director Jon Dudas testified before the Senate this morning, complaining about patent examiners having to examine patents - it was just too much work. "There ought to be a shared responsibility for patent quality among the patent office, the applicants and the public."

Dudas wants a baby-bear portion of prior art submitted with a patent application: not too little, not too much, just right. Dudas said that some applicants provide "almost nothing," while others produce "malicious compliance," which Dudas described as boxes and boxes of background information.

Crowing over the growing application rejection rate, Dudas grumbled, "there are a lot of bad patent applications," as if they peed on the rug. But Dudas thinks they do; he wants to punish miscreant applicants, insisting that the government must "absolutely punish fraud," using as an example a prior art disclosure comprising a box of documents that accompanied a patent application.

Dudas wants to require patent applicants to conduct a thorough search of the prior art, and justify why their measly ideas are patentable. But, in a gesture of graciousness, Dudas would consider personal income, the number of patents filed, and other unspecified measures, to exempt the wimpiest of applicants from the odious prior art search that patent examiners are supposed to do as part of their job. "For the truly small inventor, we might do the search for them."

The Manual of Patent Examination Procedure (MPEP), section 704.01, reads, "After reading the specification and claims, the examiner searches the prior art." On that, Dudas had no comment.

While wanting legislation to whip the losers who claim to be inventors into shape, Dudas boasted that the "PTO has authority to require more and better searches."

While the PTO today announced its pilot peer review program, giving amateurs the chance to play patent examiner, Dudas is worried that the wrong kind of post-grant review, the kind proposed in the current Patent Reform Act of 2007, would be too much work for the patent office, which couldn't handle large numbers of post-grant proceedings. So, while Dudas hypothetically supports patent examination, he doesn't want patent examiners to do too much work examining patents before grant, nor much of anything for the bad ones granted, except punish applicants and patentees for doing too little work or too much, or the wrong kind.

Hal Wegner reports on Dudas, also formally titled as Under Secretary of Commerce for Intellectual Property, being questioned about how other patent agencies handle post-grant review, particularly Japan.

Obviously questioning the Under Secretary in an opposition to a "second window" system, the Senator pointed to the "failed" Japanese system, and the movement in Japan to end its failed system. The Under Secretary was stumped, unable to point to the obvious facts of the reality of Japan that has undoubtedly the most successful post-grant review system of any of the three major patent offices of the world.

The Under Secretary was totally unprepared to answer: The reality is that under the Japanese 2004 "open window" post grant system that permits commencement of a vigorous post-grant proceeding at any time during the life of the patent, the JPO has had no apparent difficulty in finishing entire proceedings in roughly one year (with one level of court review at the new Intellectual Property High Court.) Unanswered is precisely why Japan can accomplish what the PTO says it cannot do. The 2004 revision of its law has been spectacularly successful in a prompt, efficient disposition of post-grant challenges.

Posted by Patent Hawk at June 6, 2007 10:51 AM | The Patent Office


The civil law system of continental Europe and Asia lends itself to quick and cheap justice. The only reason oppositions at the EPO still take so long is because the EPO was always so lax about speed to decision. By contrast, in English common law, there's equity, evidence, discovery, witnesses, experts. Admittedly, in patent litigations, England gets to trial within a year, but only with enormous consumption of resources during that year. Tolerable in full-blown litigation but absurd for a humdrum opposition. Only inter Partes can expose whether or not any particular patent claim is valid, but English common law doesn't "do" inter Partes quick and cheap.

How to set the USPTO "filter" is the question. Everybody wants to let through every single claim that might turn out to be meritorious, yet to refuse every single claim that covers something obvious. Yet "Commercial success" can indicate non-obviousness. Already programmed for injustice to late developers, right? USA could always do what UK did, before signing up to civil law Europe: examine novelty but not obviousness. Every patent owner asserting a claim did so in the certain knowledge that the trial would be as much about obviousness as infringement. But at least it confined the enormous effort of exploring the validity of a claim to those that were litigated. With the PTO rejecting any claim covering something old, the "quality" of UK issued patents was nevertheless not at all bad. Good enough anyway for the courts to decide whether to enjoin on an interlocutory motion.

Posted by: MaxDrei at June 7, 2007 6:06 AM

"Do some work for us"

The inventor invents and the Patent Office determines patentability; that is the way it always has been and should be regarding the shared responsibility between citizen and government for the progress of science and the useful arts. The problem with the patent system today does not lie with the inventors; they are still inventing! The problem lies singularly and solely with the USPTO which, due to mismanagement and weak foresight since 1993, has become less and less capable of proper examination and patentability determination under the law and of performing its Constitutional (and funded) function.

Posted by: NIPRA anonymous at October 1, 2007 2:43 AM