Patent Law

Broken and Unbroken

By Gary Odom and Jordan Kuhn

Referring to patents, the Economist thinks it "a pity" that a "rewrite" of "broken laws" is "back on the shelf." Wrong. The patent statutes are not what's broken, with one ghastly exception. It's the USPTO and the courts that are broken.

About the only thing that really needs a statutory fix is recognition for the sanctity of invention. Absolute novelty. Under current law, you can steal ideas from foreigners and patent them in the U.S. It can be very difficult to know when a patent was legally invented. And, most damning, thanks to a "grace" period, you don't even have to be the first to invent, only the first to file a patent. You can contemporaneously steal from others by the grace period, making it right by jotted notes and a little swearing back. The sanctity of invention isn't a concept that has crossed the minds of legislators, because there's no lobby behind it.

The USPTO is broken. Absolutely. Dissolute, incompetent management has made a mockery of "examination on the merits." This is but a slice of a wide panorama, the Bush legacy of the destruction of America, but, as with other slices, quite significant economically.

The courts are dupes of anti-patent propaganda. Sad, and pathetic, really. The CAFC is on a drunken lurch, while the Supreme Court blithely spits on patent protection when it chooses. KSR was an obscenity against common sense, ironically in the name of common sense.

There is no statutory basis for "one skilled in the art" being divergently defined. It is an artifice of the courts. It's not the KSR omnificent as everyman, with creative leaps of insight, no documentation necessary. And it's not the lack-of-enablement nitwit. If you invent a new corn seed, you shouldn't need to enable dirt. "One of ordinary skill in the art" knows her craft, but her insights for combination are limited to what's been tried before, in whatever field of endeavor. Everything is not "obvious to try." If the prior art was not analogous, it was not obvious at the time of invention.

Inability to delineate the boundaries of claims continually brings shame to the appeals court. 2005's Phillips v. AWH was decent, but as much a missed opportunity as anything. And there have been many missed opportunities since. Claim construction confusion reigns, litigation as much a crap shoot as ever. Dissenting opinions on claim constructions are a norm. Hell, the CAFC can't even count, refusing to distinguish between singular and plural.

The rules of claim construction can, and should be, a lot easier. Take the claims as written. If the claims drafter made a mistake, too bad. A prosecutor holds the responsibility to draft claims "distinctly claiming the subject matter," staking terms with either definitional support from intrinsic evidence, or plain meaning in context of the claims. The benefit of the doubt extends only to plain meaning: not to twist into a narrowing knot plain language already wrote. And to hell with squirrelly claims. In other words, put the fear of clear English behind §112 ¶2.

Full post as published by The Patent Prospector on May 10, 2008 (boomark / email).