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Policy Proposals

Aligning patent presumptions with the reality of patent review: A proposal for patent reform

December 1, 2006

The Problem

The number of patent applications filed with the underresourced U.S. Patent and Trademark Office (Patent Office) has surged, hampering the ability of reviewers to adequately perform their duties. A presumption of validity has led to overbroad and wrongly issued patents, with some patent holders extracting royalties from alleged infringers and, in effect, taxing legitimate business activity.

The Proposal

Coupled with increased funding that could boost processing, the Patent Office should improve the review quality by changing the presumption of validity so that it more accurately reflects the strengths and weaknesses of the review process. Applicants could choose between the current system and a more-rigorous review with greater protections. Additionally, smaller entities would be offered reduced fees.


Abstract

The United States Patent and Trademark Office is tasked with the job of reading patent applications and determining which ones qualify for patent protection. It is a Herculean task. One problem is resources. The Patent Office expects more than four hundred thousand new patent applications to be filed in 2007. To accurately evaluate the merits of all of those purported inventions would cost billions. Add to that the administrative costs of both interacting with all of the relevant lawyers and documenting the entire process, and the required budget is quickly beyond reach.

Information is a second significant impediment to Patent Office review. Patent applications are evaluated early in the life of a claimed technology, and thus at the time of patent review there is typically no publicly available information about, for example, how well the technology has been received by experts in the field, or whether consumers have deemed the technology to represent in some way an advance over existing alternatives. Worse, patent examiners cannot solicit these sorts of credible outsider opinions, not only because for many technologies it is unclear at the early stages who the relevant experts and customers might be, but also because patent evaluation is for the most part a confidential conversation between applicant and examiner, designed to keep an applicant's work secret just in case the patent application is ultimately denied.

Given all this, it is hardly a surprise that the Patent Office makes mistakes during the initial process of patent review, granting patents that, on their merits, should never have been issued. The real surprise is that these issuance mistakes are almost impossible to reverse.