New Laws & Rules Aimed at Solving Patent Problems
By Ryan N. Carter, registered patent lawyer with Shuttleworth & Ingersoll, P.L.C., Cedar Rapids, Iowa
In order to ensure that the United States remains at the forefront of technology and innovation, there are several problems that must be addressed with the current patent system to simplify the patent process and improve patent quality thus cutting back on abusive and costly patent litigation.
Patent Application Process
One problem is that the U.S. Patent Office has a backlog of about 750,000 patent applications. This is due, in part, to the increase in high-tech and “business method” patent applications that have been filed in recent decades. As a result of this backlog, an average patent application remains pending before the Patent Office for two to four years before it receives a final disposition.
In an effort to combat this backlog and make the U.S. patent system more efficient, the United States Patent and Trademark Office recently announced some new rules relating to the patent application process. One of the new rules limits the number of claims in a single patent application to 25 unless the applicant files an “examination support document.” (However, an “examination support document” can be an expensive and dangerous document to prepare because of its potential negative effect if the patent is ever litigated.) Claims are the core of every patent application and patent examiners typically spend much of their time analyzing the claims submitted by patent applicants. Prior to this rule, patent applications could contain as many claims as the applicant desired, as long as the applicant paid the appropriate fees.
Quality of Patents
Another problem with the patent system is that the Patent Office has allowed a substantial number of poor-quality patents in the past several decades for inventions that should not have received patent protection. The poor-quality patents can lead to unnecessary litigation which has cost many companies (and consumers) millions of dollars.
In an effort to reduce the number of poor-quality patents, the United States Supreme Court recently decided the case of KSR v. Teleflex, which some critics are calling the Supreme Court’s furthest-reaching patent ruling in decades. The case centered on the fundamental patent-law tenet that “obvious” inventions are not patentable. Generally, in order to obtain a patent an invention must be “novel” and “not-obvious” in light of the existing technology. The ruling in KSR v. Teleflex modified the “obviousness” standard thereby making it more difficult to obtain new patents and to maintain the validity of existing patents. Many hope that this ruling will reduce the number of poor-quality patents that currently congest the Federal Courts with unwarranted litigation.
New Patent Laws Proposed By Congress
Recently, Congress proposed several new patent laws that aim to make the patent process more efficient. These proposed laws have ramifications to current patent holders and future filers alike. The following are some of the issues presented by the proposed laws:
- The proposed laws would make it easier for courts to focus damage calculations more narrowly, which would be likely to result in smaller damage awards. The proposed law also makes it more difficult to obtain treble damages and attorney fees for willful patent infringement. The measure is applauded by high-tech companies but strenuously opposed by universities, small inventors and pharmaceutical and manufacturing companies, which typically produce products with fewer patents and rely in part on the prospect of heavy damages to protect their intellectual property.
- Current U.S. law provides that a patent is awarded to the first person to invent the invention rather than the first person to file a patent application for the invention. The proposed laws change this and put the U.S. in line with the patent laws of most other countries. The proposed laws are aimed at eliminating the time-consuming and expensive disputes involved in determining who was the first to invent. If the proposed laws pass, it will be necessary to file the patent application at the earliest possible date.
- The proposed laws allow third parties greater ability to challenge patents once they have been issued by allowing patent challenges to be dealt with in a more economical manner by the Patent Office rather than in federal court. Critics say that this change may make it more difficult for inventors to attract investors since the validity of an issued patent would be easier to attack.
While not everyone is happy with the recent and proposed changes to the patent rules and laws, almost everyone agrees that changes are needed to maintain a more efficient and effective patent system.