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Thursday, June 07, 2007

U.S.: Move Towards Shared Responsibility For Patent Quality.

From the on-line edition of the

New York Times:

"[...] The Bush administration wants to reform the nation's patent system by requiring better information from inventors and allowing public scrutiny of applications, according to the director of the government's patent office.

The goal, said Jon W. Dudas, director of the United States Patent and Trademark Office, is to improve the quality of patents, which should curb the rising wave of patent disputes and lawsuits. The legal wrangling is often over broad descriptions of ideas or activities, so-called business methods, or software that contains only incremental changes over prior work. [...]"

In particular, Mr. Dudas postulates something that might be seen as a new doctrine of a shared responsibility for patent quality among

the patent office,
the applicants, and
the public.

According to Mr. Dudas, reform legislation should require the applicants to conduct a thorough search of related patents and technical journals, and then explain why the patent being sought represents a significant innovation beyond previous ideas in the field. Mr. Dudas' thoughts are to be presented before the U.S. Senate Judiciary Committee.

Mr. Dudas' doctrine might, if ever cast into law, significantly change the way of preparing a patent application. Many inventors - in particular in big companies - are somewhat reluctant or even unable to provide a patent attorney attempting to draft an application text for a certain invention with concise information about written prior art. If required by law to provide reliable prior art information at the time of filing, the applicant typically would have to pay twice for prior art searches: The first one conducted or commissioned by a patent attorney prior to filing, and a second one conducted by the Patent Office after filing. Of course this would make the costs of patenting soar. For individual inventor applicants and small entities some exemptions from such requirements might be provided, says Mr. Dudas.

On June 15, 2007, the U.S.-PTO will begin a pilot project for open reviews of software patents known as

Peer-to-Patent Project. This might perhaps be seen as an implementation of the role of the public in improving patent quality.

The U.S.-PTO has published in the

Official Gazette a

Notice defining the rules for the Peer-to-Patent project, including the requirements for participating applicants, third-party submitters and the rules governing the forwarding of prior art by New York Law School to the USPTO.

There is an

interesting comment by Mr. Lerner published in an article running on

c|net:

"[...] The patent office, said Josh Lerner, a professor at the Harvard Business School, has made a real effort to improve patent quality in the last few years. But Lerner questioned whether Dudas's current proposals amounted to relying too much on getting better information from applicants.

Lerner said inventors are instinctive optimists who tend to believe that what they are doing is unique. Yet even discounting any self-serving bias, he said, the growing complexity of technology makes it more difficult for a single person - applicant or examiner - to assess the innovative merit of a patent claim.

'That's why I think really opening the examination process to public peer review is so important,' Lerner said. 'While the patent office has shown a willingness to experiment with openness, I would put that at the center.' [...]"

Mr. Josh Lerner is the Jacob H. Schiff Professor of Investment Banking at Harvard Business School, with a joint appointment in the Finance and the Entrepreneurial Management Units. Much of his research focuses on the structure and role of venture capital and private equity organizations.

Sarcastic comments can be heard from Mr. Gregory Aharonian's Internet Patent News Service delivered via e-mail:

"[...] Dudas' complaints about problems handling prior art are complaints about the PTO's incompetent logistics and search tools for handling prior art. Between the incompetence of the PTO CIO's Office, and the incompetence of PTO IT contractors, PTO examiners have been denied the resources and tools they need to handle prior art effectively. Sure, some applicants game the system with too little or too much prior art, but the bigger problem for many years has been the PTO's horrible set of tools and resources for handling prior art internally. The PTO is at least 10 years behind the times in search tools. [...]"

It appears as if in Mr. Aharonian's view all recent U.S.-PTO information management initiatives are nothing more than emergency movements just to avoid the entire collapse of the patent workflow. I do not have privileged insights into the internal structures of the U.S.-PTO and, hence, I am inclined to refrain from commenting thereon any further here.

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