The National Academy of Sciences has completed a four-year study of the patent system. The NAS Report contains an impressive and comprehensive set of recommendations for reforming the U.S. patent system. The Report contains proposals that, if enacted into law, would change the patent statute in very significant ways. AIPLA has taken similar positions with regard to needed changes to U.S. patent laws. Thus, AIPLA commends the NAS effort and believes that the NAS Report deserves the most careful consideration by all the constituencies interested in the U.S. patent system. In addition, the Report merits serious consideration by the Congress. In brief, AIPLA endorses immediate and concrete efforts to see that the major NAS Report recommendations for statutory changes to U.S. patent laws are enacted into law.
AIPLA endorses the main thrust of the NAS Report in each of the seven areas where recommendations have been made:
The patent system should remain open-ended, unitary and flexible so that, wherever “progress in the useful arts” might lead mankind, a vigorous and effective patent system can follow. No changes in the existing patent law are needed to achieve this end. Neither the AIPLA nor the NAS Report endorses any changes to the patent law in this regard.
A core feature of the patent laws should be a set of vigorously applied criteria for patentability, and AIPLA agrees with the NAS Report that the non-obviousness standard should be vigorously applied. In this respect, however, non-obviousness is no different from the other patentability requirements; all must operate with vigor for the patent law to promote progress in the useful arts. That said, AIPLA does not agree that reinvigoration of the non-obviousness law is now necessary. Rather, what is needed is a consistent application of all the requirements for patent validity. Achieving this consistency depends in part upon a U.S. Patent and Trademark Office with sufficient resources and capabilities to guarantee that this can happen. The NAS Report does not recommend any statutory change to the legal standard for assessing non-obviousness and AIPLA concurs that none is needed.
Decisions of patent examiners to issue patents should be subject to an open review process in which the public can participate. AIPLA supports the conclusion of the NAS Report that an effective post-grant opposition system needs to be instituted. However, based upon global experience with such proceedings, a post-grant opposition mechanism must be carefully constructed, adequately resourced by the U.S. Patent and Trademark Office, and appropriately constrained. It should achieve a balance between the interests of the patent owner in a final determination of patent property rights and the interests of the public in the prompt elimination of erroneously granted patents.
A predicate to the more effectively functioning patent system is a more effectively functioning U.S. Patent and Trademark Office. A key to a more effective Office lies in adequate funding levels, an improved mechanism for financing the operations of the Office, and a more effective business planning process. AIPLA wholeheartedly endorses the NAS Report recommendation that the Office’s capabilities must be strengthened. Doing so depends upon funding and financing reforms that will make possible effective business planning. Creating and enhancing capabilities of the Office is essential to the successful implementation of a new post-grant opposition procedure.
Scientific, research, or other experimental activities that allow a patented invention to be better understood, more fully developed, or further advanced should be exempt from patent infringement. Codifying such an exemption as recommended by the NAS Report, would remove the uncertainty that now exists over the manner in which a patented invention can be used to better understand and/or extend what is patented.
The cost of patent litigation, which itself renders many patents de facto unenforceable, should be addressed through statutory changes recommended by the NAS Report. These changes include elimination, limitation or modification of current provisions of the patent law as they relate to willful infringement, inequitable conduct, and the requirement to disclose the inventor’s contemplated best mode. While these changes may appear controversial to some inside and outside the IP community, radical changes in the patent law are needed to control the costs of all aspects of filing, procuring and enforcing patents.
Substantive U.S. patent law should be radically simplified in the manner proposed by the NAS Report. AIPLA supports adoption of a “best practices” approach to modernizing the U.S. patent system. These include adoption of a first-inventor-tofile system, repeal of “loss of right to patent” provisions, ending the exclusions to 18-month publication of pending patent applications, and removal of the “best mode” requirement. Such changes to U.S. patent laws would also have the salutary effect of further harmonizing U.S. patent laws with those of other advanced industrialized countries. The NAS Report makes a persuasive case for the need to change U.S. patent laws and to seek patent law harmonization internationally.
As a final point, AIPLA supports taking a holistic and synergistic look at the recommendations contained in the NAS Report and the impact they would have on the U.S. patent system. The major statutory changes recommended in the NAS Report – instituting the post-grant opposition proceedings, eliminating subjective elements in patent litigation, and adopting harmonizing changes to U.S. patent law – could revolutionize the efficiency and effectiveness of U.S. patent system, if undertaken in a coordinated fashion.
While the more detailed and technical observations of AIPLA appear below, they should not obscure or dilute the essential conclusion reached after a careful study of the NAS work. The NAS Report represents a major achievement in the continuing efforts directed towards improving the operation of the U.S. patent system. The NAS Report should not only be carefully studied, but it should serve as a call to action by the Congress and other U.S.-based organizations interested in the future of the U.S. patent laws. Congress should look closely at improving the funding and financing of the U.S. Patent and Trademark Office, creating a balanced opportunity for post-grant opposition to all issued U.S. patents, barring patent infringement suits for certain research or experimental activities, eliminating subjective elements from patent litigation, and enacting a comprehensive set of “harmonizing” changes to the U.S. patent laws."
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
AIPLA has published a 
