In my previous post http://techroadmap.com/ipdirections/2011/07/11/the-patent-reform-we-really-need/ I indicated that Jaffe and Lerner’s suggestion of doing away with patent examination and the presumption of validity for an issued patent that goes with it – essentially changing patents into registration-only documents, as is the case for copyrights – might not be a bad idea after all.
But of course times have changed since they made that suggestion (2004) and the problems we have today are different from what they addressed then. Then, the problem was that anything could be patented; now the problem is that even good inventions have to fight inane, illogical, and unfair office actions at significant extra expense to the applicant.
Also, Jaffe and Lerner’s suggestion did not fix the problem they identified (poor examination); all it did was push “examination” down the road to a more expensive venue where, it was assumed, only “valuable” inventions would end up. The rest of the inventions, presumed not valuable because no one needs to enforce them, would be registered and make nice wallpaper. This latter presumption is flawed, particularly for the small entity.
The final flaw in their suggestion is that it is inconceivable that it would ever be implemented. The idea that Congress would ever change the fundamental definition of a patent is inconceivable.
Rather than try to change what a patent is, let’s make the process of getting a patent conform to the stated goals of the patent system. It is the patent examination process that is flawed, not the definition of a patent. Let’s fix the problem by changing the problem’s source. Incidentally, fixing the examination process can, for the most part, be achieved without legislative action.
There are two goals for the patent system: on the one hand, the system is intended to reward inventors who advance the state of “science and useful arts”, on the other hand the patent system is intended to provide the benefits of such an advance to society by adequately disclosing the advance in the patent specification. The primary function of the examination process, then, is to determine, by a reading the specification, whether the inventor has indeed made a significant enough advance to science and the useful arts to merit awarding a limited time monopoly on the invention, and whether the advance is disclosed clearly enough in the specification that other workers can make use of the advance.
I believe that the only way to achieve the goals of the patent system is to have an examination process that seeks the truth about the invention’s quality and that ensures that the specification explains the details of the invention. A model for such a process exists today, not in the patent world, but in the publication of academic research. In theory, if not in practice, the editor and reviewers for an academic journal are supposed to read a manuscript to determine both the value and originality of the underlying research AND whether the presentation in the manuscript is clear and complete enough that other researchers can try to replicate the results.
Without pretending to understand the “back story” of how we got here, it is clear to me that the current examination process, far from being an evaluation of the value and clarity of the invention and specification respectively, is instead an exercise in intentional obfuscation on the part of many applicants and an exercise in semantic gamesmanship on the part of many examiners. Patent examination is not supposed to be an adversarial process, but it is clear that, at almost every turn, applicants are wary of admitting or explaining anything, for fear it will be used against them and examiners seem intent on finding a word or phrase in the independent claims that they can use to cite obviousness or anticipation, even where there is none.
This process must change.