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PREVENTING THE ISSUANCE OF "BAD" PATENTS

By Lawrence B. Ebert, Esq.

Justin Pats has an article in IDEA entitled: PREVENTING THE ISSUANCE OF "BAD" PATENTS: HOW THE PTO CAN SUPPLEMENT ITS PRACTICES AND PROCEDURES TO ASSURE QUALITY which concludes:

Ensuring that only truly innovative inventions garner protection is critical to maintaining the value of the limited exclusive monopoly granted by a patent. The best way to accomplish this is to establish a strong and thorough examination process. Although it is impossible to guarantee that all issued patents are deserving, by strengthening the front end of the prosecution, the PTO [page 448] can work to minimize the problem of "bad" patents. Specifically, the PTO should expand its resources to include consultation with individuals on the cutting edge of technology in areas such as business methods. These individuals have special knowledge and represent an untapped resource critical to evaluating patent applications. By assembling and instituting a panel comprised of industry professionals and academics to assist in addressing issues of patentability for selected patent applications, the PTO will not only prevent blatant allowance "bad" patents, but also forge a relationship between industry, academia and government to ensure that inventors are afforded the highest quality examination process possible. Just as important, this endeavor will help change the culture of rejection and reduce the public ridicule that has enveloped the business methods workgroup at the PTO in recent years.

At the beginning Justin thanks Professor Michael Abramowicz.

It's not clear that a "bad" patent is defined in the article. Justin does say:

There are numerous causes of "bad" patents, the root of which involves the examination process itself. First, examiners lack sufficient examining time per patent. n28 On average, this amounts to only about twenty hours per application, which is alarmingly low in light of the numerous purported bad allowances identified on various Internet blogs. n29 A second factor is the lack of resources available to examiners. n30 Although examiners have access to a wide variety of patent and non-patent literature (NPL), n31 severe limitations still exist, including a lack of contact with private sector inventors regarding business practices that were in public use, but not readily available via print media, at the time of the application at issue. Examiners are not encouraged to engage in third-party private sector communication and often go through an intermediary; for example, the government contracts with the Scientific and Technical Information Center (STIC) for prior art search requests when it is unable to obtain the information it seeks via the resources available at the PTO. n32

One does find references to Jaffe and Lerner. For example, footnote 7:

See U.S. Patent No. 6,004,596 (filed Dec. 8, 1997); see also ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS: HOW OUR BROKEN PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO DO ABOUT IT 32-34 (2004); Mark Lemley et al., What to Do About Bad Patents, REGULATION, Winter 2005-2006, at 10, available at http://www.law.uchicago.edu/files/lichtman/bad-patents.pdf.

One even finds a reference to LBE in footnote 13, sadly combined with Jaffe and Lerner: Id. [Jaffe and Lerner, at 34, note 6]; see also Lawrence B. Ebert, Inadvertent Argument Against Peer-to-Patent, IPFRONTLINE, June 28, 2007, http://www.ipfrontline.com/printtemplate.asp?id=15505. [For another odd citation to LBE, see footnote 181 of 7 J. Marshall Rev. Intell. Prop. L. 545. For more conventional ones, see 7 Rich. J. Global L. & Bus. 91 and 52 St. Louis L.J. 781]

Footnote 34 talks of perceptions: Charles Emerick, Law prof takes aim at 'silly' patents at University of Missouri, DAILY REC., Nov. 6, 2007, available at http://findarticles.com/p/articles/miqn4181/is20071106/ain21101914 ("There's a perception out there that there are lots of bad patents" (quoting Mark Lemley)).

Full post as published by IPBiz on August 06, 2008 (boomark / email).