Focusing on Patent Quality to Fight Patent Trolls

Posted on 04-07-2014 by
Tags: Real Law

Brought to you by the Real Law Editorial Team

Here’s a suggestion for a movie sequel. It takes its cue from the 2012 dark fantasy action film Abraham Lincoln: Vampire Hunter, which was based on a mashup novel of the same name.

This is the idea: Barack Obama: Patent Troll Slayer! It’s got… executive branch attitude!

If that scenario falls flat for readers, a disclaimer is in order. The idea stems from a March 2014 article that appeared in Wired.

Leaving aside the obvious political hyperbole, the article makes a valid point: patent reform has been a priority of the Obama administration, and real strides have been made to correct some serious faults with the current system.

In particular, through various executive orders, measures have been introduced to address legislative gaps that continue to encourage patent trolls.

Going off Script

One area that has received special attention is patent quality. It’s key to thwarting unscrupulous patent trolls, who still hold a powerful grip on legal dockets across the country. Yet the executive measures really just provide the means to get back to the basics of what should constitute a valid patent.

Indeed, IP attorneys have always appreciated the role that quality plays in patent applications. For one thing, strong applications can lead to more defensible patents. The legal standards of utility, novelty, non-obviousness and written description are and should be the fundamental determinants of a patent grant, and only those applications that meet the criteria should be allowed.

But we know that things haven’t quite followed that carefully scripted logic. A renewed emphasis on patent quality acknowledges several factors that have contributed to the rise and influence of trolls and the current state of the patent system in general.

Focusing on Innovation

A flood of software and business method patents issued by the U.S. Patent and Trademark Office (USPTO) starting in the 1990s certainly played a role, but concerns about overly broad and vague claims continue to this day. In fact, a recent study concluded that even under the current—some would argue highly permissive—standards, about 50 percent of software patents would be found either partially or completely invalid if challenged in court.

Part of the problem, according to some observers, is that USPTO examiners spend too little time and rely on a limited set of sources when looking for prior art related to software patent applications. Also, applicants are able to use invented terminology rather than a common term of art, which can make an examiner’s task even more difficult.

To address those and other concerns, President Obama issued a series of executive orders in June 2013. As a result of those orders, the USPTO developed and implemented a training program to help its examiners rigorously assess so-called “functional claims” with a view to ensuring that they are clear and can be consistently enforced.

The USPTO is also testing the use of glossaries in patent specifications to promote consistency and clarity.

In February 2014, not long after using a State of the Union address as a platform to urge even more action to help businesses “stay focused on innovation” rather than “costly and needless” patent litigation, Obama issued additional orders intended to help ensure that “U.S. patents are of the highest quality.”

The USPTO subsequently announced a new crowdsourcing initiative focused on expanding ways for companies, experts and the general public to help patent examiners, holders and applicants find relevant prior art.

In addition, more robust technical training for patent examiners is being rolled out along with a call for more input and guidance from innovators and the participation of industry.

Withstanding Heightened Scrutiny

All of the above has to take into account what was likely an unintended consequence of the America Invents Act (AIA), which was passed by Congress and signed into law by Obama in September 2011. The AIA switched the country’s patent system from a first-to-invent to a first-to-file model, which could potentially result in innovators forsaking quality for speed in patent applications.

That’s an area in which the patent bar will have to be particularly vigilant if it wants to withstand the heightened scrutiny of the country’s newly refocused patent examiners—not to mention lawmakers and an executive branch that seems focused on vanquishing patent trolls once and for all.

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