Patent notes

Two pieces in this morning's Washington Post. The first is an editorial Patent Fight in support of the pending patent reform legislation:

Though strong patent protection is a good thing, lately the problem has been too much of it. The technological revolution of the past quarter-century has swamped the U.S. Patent and Trademark Office with hundreds of thousands of patent applications, each claiming to be original and each more arcane than the last. The result has been a proliferation of "low-quality" patents and expensive lawsuits over who invented what. Some inventors use dubious patents to extract large payments from high-tech companies, which usually find it cheaper to buy off purported inventors than to battle them in court. This is not a pro-innovation patent system; it's an anti-competitive one.

The second piece is in the Federal Diary section - Backlog, Quotas Overwhelm Patent Examiners:

Here's how bad it is at the U.S. Patent and Trademark Office.
If the agency could shut its doors to catch up on its work, its 5,500 patent examiners would take at least two years to clear the backlog of pending applications. When the agency reopened, there would be more than 1 million new applications piled up on the doorstep.

The story is about a new GAO report - U.S. PATENT AND TRADEMARK OFFICE: Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog. The report looks specifically at the issue of retention of patent examiners:

Despite its efforts to hire an increasing number of patent examiners annually and implement a number of retention incentives and flexibilities over the last 5 years, USPTO has had limited success in retaining new patent examiners.

That retention issue is directly tied to what examiners feel is an unrealistic workload. And examiners are apparently voting with their feet.

Workload and patent reform are integrally linked. Workload is due not just to more and more complex patents. It is also due to applications clogging the system. The Federal Diary story explains:

In an interview, Jon W. Dudas, the agency's director, said reducing the backlog of applications for patents involves more than hiring and keeping examiners. "A good part of this solution is saying that, 'Applicants, if you give us better information, we can do a better job,' " he said.

A quarter of applications arrive with no supporting materials and another quarter carry more than 25 references to supporting data, he said. Although an extreme example, Dudas said the agency once received an application that came in 28 boxes, with 2,600 pages per box.

"We need the best material. Not the kitchen sink. And not nothing," Dudas said.

Recently the PTO has published new rules on continuations and on additional documentation:

Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.

But some are up in arms about the change. For example, biotech companies worry that this will harm them (The Scientist : New patent rules hurt biotech?):

Currently, applicants can file an unlimited number of continuation requests accompanied by new arguments and evidence to support their claims. That strategy is frequently employed by universities and biotech companies when the full scope of their discoveries cannot be immediately established or when researchers seek to extend patent coverage from one or two new molecules to an entire class of compounds.

Under the new rules, applicants must demonstrate why an additional continuation is necessary and provide supplementary information to support additional claims.

[As a side note, I find this concern by biotech and pharma to be very interesting, since they are the loudest critics about the time it takes to get a patent. Bio/pharma have a very strong and legitimate complaint about the time lag -- especially given the FDA approvals needed as well. But the above statement begs the obvious question: has bio/pharma's patenting process helped create the very problem it is complaining about?]

There are other administrative actions that can be taken as well. In earlier postings, I mentioned a new pilot program at PTO to sort through pre-grant information ("prior art") through a peer-review system. That will help (but will need legislative approval if it is to expand beyond a voluntary program).

But ultimately, it comes down to what the Post editorial was talking about -- weeding out the dubious patents. Administrative changes are not enough (even those which everyone agrees on). Nor is continued Supreme Court refinement doing to be sufficient. Patent reform legislation is still needed.

And the sooner, the better.