Intellectual Property 101: How to get – and challenge – a patent
As the Supreme Court prepares to cut the 'clear and convincing' standard for proving patent invalidity, it's worth examining the key steps of the patent process.
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But as I noted in “Radical Patent Reform Is Not on the Way,” patent attorneys and others with vested interests describe even the smallest improvements in patent law (by which I mean changes that weaken it) as radical and drastic, hysterically predicting all manner of horrible fallout. In this case, one commentator calls this “the most important Supreme Court patent case of the new century.” The Chairman of i4i, the plaintiff, moans that a victory for Microsoft would “result in is tremendous uncertainty for anyone who owns a patent . . . It would be a sea change in the operations of the patent office and would be a dramatic body blow to the health of the U.S. patent industry and the value of patents.” What nonsense.Skip to next paragraph
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As Zura mentions in his post, “In the meantime, the USPTO applicants will likely inundate the USPTO with prior art submissions.” Yes, prior art submissions will increase to reduce the chance that a defendant will find prior art that had not yet been “considered”–although if you bury the PTO with prior art submissions it’s unlikely the Examiner can study them all. This is in fact one reason why the PTO has proposed rules in the past to require Applicants to explain the relevance of each submitted reference, in an “Examination Support Document,” if they submit more than some minimum number. (See Patent Baristas, Examination Support Document (ESD) Could Add $26,000 to Patent Costs.) In “Reducing the Cost of IP Law,” I proposed this change:
Require patent applicants to do a search and provide an analysis showing why their claimed invention is new and nonobvious (patent attorneys really hate this one).
They hate it because they hate being on record; they hate saying anything in writing that can later be used against the patent’s validity. They want to keep their options open. I say: it is patent applicants who are begging the state for a monopoly grant; the monopoly is supposed to be granted only if the invention claimed is novel and non-obvious over the prior art; the Applicant is supposed to submit all the material prior art he knows of; and the patent “prosecution” process is ex parte, not adversarial, meaning that the potential defendants are not present during patent prosecution so can’t represent themselves. Therefore it is only fair that the Applicant explain exactly why and how his proposed monopoly privilege grant satisfies the legal criteria. It would result in narrower and more reasonable claims and would help to fill the inevitable gaps in the quality of the examination.
So, if the Court does side with Microsoft, and this results in Applicants filing more IDSs (information disclosure statements), the increased burden on the PTO Examiner may well lead to renewed calls for an Examination Support Document requirement. This would be good. But, alas, also minor.
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