“Patent reform” initiatives are appealing in view of a number of perceived problems, such as the thoroughness of patent examination, the readability of the patent document to non-professionals, and the extreme costs of both patent enforcement and defense. Advocates of patent reform therefore propose a host of measures to address these objectives and lead the patent system to a brighter future.
However, our current body of patent law is a delicate balance of interests, and efforts to reduce one problem may create or exacerbate problems in other areas of the patent system. This post explores some of the objectives of patent reform that are in direct conflict, and among which deliberate choices must be made while proposing patent reform efforts.
Professionals in many fields are aware of the “pick two” concept – for example: “Cheap, fast, and good: pick any two.” It’s recognized that projects cannot be ideal in all respects, so priorities must be compared and tradeoffs considered when considering options for solutions. Moreover, these interests are often a spectrum of competitive tradeoffs: increases in quality expectations require increasing amounts of cost and duration.
This concept also describes most complex systems – including patent law. Our current system is a careful balance of competing interests, some requiring intentional compromises for logistic and practical reasons – e.g., patents are not issued with a guarantee of validity over all possible prior art, but only the prior art of record.
However, many reform efforts are not developed with an understanding of this balance. The resulting proposals are often incoherent, in that some efforts cannot be achieved without interfering with other objectives in the same proposal. The following objectives of patent reform present a direct but often unrecognized conflict, requiring a finessed solution or compromise rather than a simplistic solution.
- Examination thoroughness vs. pendency.
- Objective #1: Patent examiners must be required to conduct a comprehensive review of the related art. Too many patents are issuing because the examiner did not consider a relevant reference.
- Objective #2: Patent examination must be expedited. Too many patents issue for technology that is years in practice – especially in fast-paced fields such as software – and companies find themselves accused of infringement for techniques that are long in use and deeply ingrained in their product base.
- The Conflict: This is a simple time-vs.-effort tradeoff. Expanding the examiner’s review of prior art requires longer examination, and therefore extends patent pendency.
- Valid Options:
- Reorient the examination process to discourage repeat office actions, such as “non-final” vs. “final” status.
- Identify and reduce procedural bottlenecks – such as the “RCE hole” and the protracted delay of the appeal process.
- Discourage squabbling over non-substantive issues, so that examiners can spend more time reviewing the prior art.
- Specification precision vs. readability.
- Objective #1: Patent specifications must be precise and complete, with definitions, legal boilerplate about precisely what is meant by terms such as “substantially,” and clear and verbose support for every aspect of every claim, so that competitors know precisely what is taught and covered.
- Objective #2: Patent disclosures are too formalistic and loaded with legal terms and constructs, such as “comprising” and “means-plus-function” language and Markush groups. A central purpose of the patent system is to educate technologists of “ordinary skill” in the related art, and this purpose is not well-served by disclosures that are difficult for technologists to read.
- The Conflict: Patent documents are difficult to read, specifically because of dozens of “gotcha” cases, where an examiner or court cited (and in some cases, invented) a requirement of specification or claim construction that led to an unexpected result. As just a few examples:
- Ex parte Gross: Appeal (requiring four years to resolve) over whether the claim term “and/or” is ambiguous.
- In re de Seversky: Continuation application found not to disclose a claimed feature, because even though the continuation explicitly claimed priority to a grandparent application that did disclose the feature, the continuation did not use the magic words “incorporated by reference” to import the grandparent specification.
- American Medical Systems v. Bilitec: A patent claiming a technique for photoselective vaporization of tissue was invalidated based on prior art having nothing to do with photoselective vaporization, because a CAFC majority decided that the preamble was non-limiting.
- Braintree Laboratories v. Novel Laboratories: CAFC held that a claim reciting “a colon of a patient” did not cover treatment of a single patient, but instead referred to a “patient population” requiring a plurality of patients.
- Abbott Laboratories v. Baxter Pharmaceuticals: CAFC held that a claim reciting “an inhibitor selected from the group comprising:…,” followed by a Markush group identifying several possible inhibitors, did not cover a product featuring more than one of those inhibitors, because even though “a” usually connotes “one or more,” a Markush group is interpreted as “only one of the following.”
- Nystrom v. Trex, Inc.: CAFC held that a patent reciting a particular advantage of the invention excludes embodiments that cannot achieve the advantage.
Patent practitioners are compelled to shape their drafting style based on dozens of these kinds of “gotcha” decisions and jumping-through-hoops requirements imposed by examiners and judges. The result is a specification that utilizes legal constructs in a rigorous and monotonous legal form: not “a leg” of a chair, but “the respective at least one leg,” etc. These requirements pressure applicants to disclose less, to keep arguments terse and succinct, to adhere slavishly to clumsy legal constructs – all of which reduce the readability of the resulting disclosure.
- Valid Options:
- Discourage examiners from issuing form-over-function types of objections and rejections.
- Stop penalizing applicants for statements in the disclosure that are helpful for explaining the invention, and not intended to be limiting.
- Limitations on breadth vs. limitations on significance.
- Objective #1: Limitations must be imposed on the breadth of claim scope. Too many patents are issuing with claims that broadly cover a large number of variations in a particular field.
- Objective #2: The threshold of novelty must be raised. Too many patents are issuing for minute variations that provide only minor and incremental advances over known technologies.
- The Conflict: These two complaints are often heard together: that some patents claim a broad concept that can be implemented in many ways, while others recite an overly specific and trivial incremental improvement over the prior art. However, even if standards of inventive quality or worth were not completely subjective, it must be appreciated that these competitive pressures run in opposite directions: restrictions against incremental advances means that applications will necessarily be filed for broader, more ambitious claims, and restrictions against overbreadth would result in a greater volume of patent filings that each recite specific, selective variations.
- Valid Options:
- Concerns about overbreadth have already been addressed by the Alice line of cases, which, in effect, promote increased disclosure requirements: i.e., a broad patent scope will only be allowed if the disclosure provides clear support for the breadth of the scope.
- Concerns about patents for trivial and routine innovation have been addressed by the KSR decision, which grants broader latitude in the combination of references. Alternatively, for inventions that meet both the novelty and non-obviousness requirements – complaints about withholding patent protection raise the specter of the “flash of genius” requirement that proved catastrophic to the pre-1952 patent system, and which the 1952 Patent Act squarely rejected.
- Public assistance vs. examiner efficiency.
- Objective #1: The public must be permitted to participate in patent examination by submitting references for the examiner’s review. Patents should not issue when prior art exists that is known to the public, but that the examiner did not consider.
- Objective #2: Patent examiners must do a better job of reviewing and considering all of the cited references in detail before allowing a patent to issue.
- The Conflict: Regardless of how much time we allow an examiner to spend on examination, the fact remains that it must be finite. Every minute that an examiner spends reviewing prior art submitted by the public, is one minute that the examiner does not spend on a more thorough examiner-initiated search and review. Moreover, the public prior art process can be co-opted. The examiner has an obligation to understand the specification, to constrain the review to the most relevant art, and to reach the most accurate decision – but the public has no such obligation or interest, and a strong interest in flooding the examiner with references, either as a distraction from more relevant references or out of a misguided interest in “helping” the examiner. And the current third-party submission fee of $180 (and only $90 for “small entities”) is completely inadequate at discouraging these objectives.
- Valid Options:
- Raise the third-party submission fee considerably, in order to encourage the public to be careful and judicious about submitting references. (The fee may be refundable if the examiner ends up using the reference in a subsequent office action.)
- Raise the requirements of third-party submissions: not just identifying a reference, but a mapping of specific claim elements with specific passages of the reference, and an argument section – i.e., requiring the examiner to set forth the prima facie case for rejection that the third party wants the examiner to adopt.
- Opposition tools vs. egalitarianism.
- Objective #1: Competitors must be given ample opportunities to challenge patents, both during and after examination, before they are dragged into costly and high-stakes litigation.
- Objective #2: Patents must be affordable for all applicants, and must not be only accessible to well-funded companies.
- The Conflict: The patent system is developing an odd split, where patents are becoming increasingly affordable to obtain – thanks to fee reductions and micro-entity fee discounts – but where enforcing a patent is an exceedingly expensive endeavor – thanks to new options for invalidation by third parties, the CAFC’s insistence on de novo review, the growing litigation cost resulting from the uncertainty of patent validity in view of decisions like Alice Corp. v. CLS Bank. These cost concerns disproportionately impact small businesses and universities with constrained patent budgets, while allowing major, well-funded patentees to continue apace. There is an inherent unfairness at a system that grants patents economically, but allows only the most well-funded patentees to assert them. For example, the devastating costs of an adverse ruling may force small businesses to be extremely hesitant about asserting patents. Indeed, these constraints compel applicants to assign patents to large entities, notably including non-practicing entities, that can embark on expensive litigation against infringers.
- Valid Options:
- Redesign the cost structure of patent litigation to enable small entities to consider patent litigation as a viable enforcement option.
- Streamline court processes, particularly discovery, in the interest of cost containment.
- Work with small entities to identify litigation teams that can take on their cases on an adequate fee schedule.
These reflections demonstrate the careful balance of the patent system as a compromise among competing interests. While patent reform is certainly necessary and possible, reform efforts must be developed carefully and must account for the broad effects of sweeping changes.