[Ip-health] US Congressional debate: Patent Reform is in the Air

[James Love]

http://www.patentlyo.com/patent/2007/02/patent_reform_i.html

Feb 16, 2007
Patent Reform is in the Air

On February 15, the House IP Subcommittee held a hearing on "The Case
for Patent Reform." All four seats at the table called for change:

     * Adam B. Jaffe, Professor and Dean, Brandeis University
     * Suzanne Michel, Chief Intellectual Property Counsel, FTC
     * Mark Myers, National Academy of Science (Former Xerox Exec)
     * Daniel B. Ravicher, Activist, PubPat

Jaffe:

     The key to more efficient patent examination is to go beyond
thinking about what patent examiners do, to consider how the nature
of the examination process affects the behavior of inventors and
firms. To put it crudely, if the patent office allows bad patents to
issue, this encourages people with bad applications to show up. While
the increase in the rate of patent applications over the last two
decades is driven by many factors, one important factor is the simple
fact that it has gotten so much easier to get a patent, so
applications that never would have been submitted before now look
like they are worth a try. Conversely, if the PTO pretty consistently
rejected applications for bad patents, people would understand that
bad applications are a waste of time and money.

Ravicher:

     Unlike tangible forms of property, such as real estate, patent
boundaries are almost always poorly defined. Many patents are written
in vague or obscure language, claim construction procedures are
uncertain and vary from judge to judge, existing claims are hidden in
the pipeline at the Patent Office, and the use of abstract terms
allows patents to cover far more technology than what was actually
invented. One sign of how difficult it is for people to determine
exactly what a patent does and does not cover is the fact that more
than a third of all district court judges, after performing a
thorough analysis of a patent's claims, have their construction of
those claims reversed by the CAFC.

     If Federal Judges can't agree on what claim terms mean, how can
we expect the average American business person or individual inventor
to do so. . . . .

     [I]n order to address the problem of fuzzy patent boundaries, a
patent's validity should always be analyzed according to the broadest
reasonable interpretation of its claims, because that is the
construction of the patent that the public will generally abide by
until the patent is reviewed by a court, and the currently dormant
statutory prohibition against indefinite claim language should be
awakened and strengthened.

Mark MyersMyers:

     High rates of technological innovation, especially in the 1990s
but continuing to this day, suggest that the patent system is not
broken and does not require fundamental changes. Nevertheless [we
should address] . . . consistent patent quality . . .
harmonization . . . publication [of all filed applications] . . .
[reducing] litigation costs . . . [and] patent thickets.

Michel [1][2]:

     The [FTC] Report recommended creation of a new administrative
procedure for post-grant review and opposition that allows for
meaningful challenges to patent validity short of federal court
litigation. Existing means for challenging questionable patents are
inadequate. Patent prosecution is ex parte, involving only the PTO
and the patent applicant, even though third parties in the same field
as a patent applicant may have the best information and expertise
with which to assist in the evaluation of a patent application.

Notes:

     * I'm ignoring the HR977 that would end gene patenting because
it is going nowhere. It would add the following language:
`Notwithstanding any other provision of law, no patent may be
obtained for a nucleotide sequence, or its functions or correlations,
or the naturally occurring products it specifies.'.
     * S. 316, on the other hand, may get some legs. That bill would
eliminate generic reverse payments. Leahy


---------------------------------
James Packard Love
Knowledge Ecology International
mailto:james.love@keionline.org
tel. +1.202.332.2670 / mobile+1.202.361.3040

"If everyone thinks the same: No one thinks."  Bill Walton"