Patent quality returns to the fore | American Enterprise Institute
While the technology community, patent practitioners, industry trade associations, and academics may not agree on everything when it comes to patent policy, as we’ve seen time and again in recent months, there does appear to be one area of common ground: increasing patent examiner resources in order to enhance patent quality.
Patent examination — the process by which US
Patent and Trademark Office (USPTO) personnel consider, edit, amend, reject,
and/or allow patent applications to issue — is a notoriously underfunded
exercise that can result in the issuance of “bad” patents that may be obvious
or recycled, or so poorly written as to be unintelligible.
For years, many in the patent world have urged
Congress to hire more examiners and give them more time to spend examining
individual patents, but largely to no avail.
Yet new research and a recent Senate hearing
have injected fresh life into the campaign.
Late last year, Professors Michael Frakes of the Duke University School of Law and Melissa Wasserman of the University of Texas at Austin School of Law published a groundbreaking paper that reconsidered the costs and benefits of augmenting the resources provided to patent examiners.
In “Irrational Ignorance at the Patent Office,”
Frakes and Wasserman argued that “the savings in future litigation and
prosecution expenses associated with giving examiners additional time per
application more than outweigh the costs of increasing examiner time
On the basis of empirical research, they found
that “a doubling of examination time allocations
results in a 44% reduction in the number of times an application is ultimately
the subject of a federal patent lawsuit.” That finding, Frakes and Wasserman
asserted on the basis of follow-up research, was unaffected even by the onset
of Patent Office proceedings such as Inter Partes Review, which were designed
to reduce the prevalence and expense of patent litigation.
And they further discovered that increasing
patent examiner time allocations would reduce the cost of patent prosecution — the
process of writing, editing, and examining patent applications — by more than
Accordingly, Frakes and Wasserman concluded
that “society would be better off investing more resources in the Patent Office
to improve patent quality than relying on ex post litigation to weed out
And last week, the Intellectual Property Subcommittee of the Senate Judiciary Committee, which has lately been very active on patent matters, held a hearing entitled “Promoting the Useful Arts: How can Congress prevent the issuance of poor quality patents.”
There, Drew Hirshfeld, Commissioner of Patents at the USPTO, testified about the state of patent quality. He provided a status update about recently-enacted Patent Office initiatives given current resource levels but cautioned that “examiners have 22.5 hours, on average, to complete their examination of each patent application,” including understanding the invention claimed therein and “determining whether the invention is new and non-obvious by performing a patentability search of the ever-increasing body of hundreds of millions of prior art references.”
Wasserman herself testified that “additional patents being issued as a result of examiner time constraints are indeed of questionable legal validity, citing her own research and observing that patent application “fees fail to cover even half of the Agency’s examination costs.” She proposed raising application fees while eliminating issuance fees; prohibiting repeat applications, where applicants recycle earlier rejected applications; and increase the time available for examination (her research revealed only 19 hours’ worth of examination time per application).
Even skeptics of patent reform have voiced
support for patent quality improvement measures.
At an earlier hearing, Josh Landau of the
Computer and Communications Industry Association (CCIA), which has resolutely
opposed the STRONGER Patents Act and has been lukewarm toward efforts to reform
patent eligibility law, testified in favor of increasing Patent Office
resources in order to improve patent quality.
“CCIA strongly supports the goal of improving patent examination in order to ensure that the patents that issue from the USPTO fully deserve their statutory presumption of validity,” Landau stated on the record. “While a perfect system in which invalid patents are never issued is impossible, it appears very likely that the present system could be significantly improved. One of the best proposals is also the simplest—the USPTO should provide examiners with more time to conduct examination.”
Given the exigencies of impeachment and the looming election year, there doesn’t appear to be any clear timetable or strong appetite for patent legislation. Nevertheless, at some point relatively soon, we can expect these patent quality improvement proposals to gain traction, whether independently or as part of some package deal involving the other patent reform measures.