By Kevin E. Noonan --
It's getting harder and harder for patentees, applicants, and their counsel to know who their friends are. First there was the silence of the major industry groups in the face of the new continuation and claim limitations rules since enjoined by Judge Cacheris in the Federal District Court in Virginia (see "Breaking A Very Long Silence"). This situation has improved noticeably, however, since GlaxoSmithKline sued the Patent Office. Several amici filed briefs in support of GSK's (and Dr. Tafas') preliminary injunction motion, and several others have sought leave from the court to file amicus briefs in support of GSK's (and Dr.Tafas') substantive allegations in their respective complaints.
Now comes the Intellectual Property Owners, specifically their President, Marc Adler (at right), who has taken the opportunity at this time to support (unwittingly or not) the fanciful bases the Patent Office has used to justify its ill-conceived new rules. In an address to the Trilateral Public Users Conference in Washington last Thursday, Mr. Adler admonished patent applicants and their counsel to join with the different patent offices represented at the conference (the U.S., Japanese, and European Patent Offices) to improve the "quality" of patents obtained by applicants. In this, Mr. Adler sounded vaguely like Patent Commissioner Doll, who has defended the new rules, even when his evidence seemed contradictory (see "They Just Don't Get It - 'Patent Reform' at the USPTO") on the grounds that the Office was trying to improve patent "quality." The general substance of Mr. Adler's talk (his presentation is available here) was sufficiently generic to resemble patent platitudes. However, the talk also presented as justification for its admonitions some survey results produced by the IPO directed to patent "quality." Those results and the way they were used suggest, charitably, a certain naiveté concerning the zeitgeist of the patent world today.
The survey asked a seemingly innocuous question: how do you rate the quality of patents being issued in the U.S. today in your industry or field of technology? The responses were reported as follows: 0% outstanding; 3.8% more than satisfactory; 40% satisfactory; 47.5% less than satisfactory; and 3.8% poor. On its face, this survey thus indicates that more than 50% of respondents thought the quality of patents granted in the U.S. were less than satisfactory. However, upon closer inspection there are a number of deficiencies in this analysis. First, the survey responses date from September 2005, and since the question it asks requires a determination that must have been developed over time, the impressions forming the basis of the answers must be even older, towards the turn of the century. It is certainly the case that the Office was dealing with several challenges over that timeframe that could have negatively affected quality. These include considering for the first time business method patents in the wake of the Federal Circuit's State Street decision; the tidal wave of human gene patenting applications resulting from the culmination of the Human Genome Project; the changes in patent examination resulting from new utility and written description guidelines promulgated January 6, 2001; the changes in patent law caused by the American Inventor Protection Act; and the cumulative effect of more than 15 years of Congressional fee diversion that left the Office ill-equipped to effectively deal with these challenges.
However, this reasoning concedes that there is (or was) objectively a patent quality problem. Unfortunately the survey was not objective; it asked for a subjective evaluation (and a qualitative one at that) of patent "quality." There is no indication that the survey defined what the elusive attribute called "quality" is, and indeed in this context "quality" is like beauty - although it is probably in the purse rather than the eye of the beholder. There are also self-interest issues involved: a respondent (all of whom were corporations) could believe that the "quality" of U.S. patents had gone down because for the first time competitors were using patents to prevent such corporations from doing what they liked without interference. Citing "quality" issues also provides a bit of a fig leaf for an entity that wants to appear to support the patent system (particularly for its own patents) but cast doubt or aspersions on patents of others, especially when those others are asserting their rights to the corporation's detriment. Perhaps a more telling way of asking the question would have been to ask: how do you rate the quality of patents being issued in the U.S. today to you in your industry or field of technology? Of course, it is unlikely that the responses would have been quite the same if the question had been asked like this.
The bigger problem with Mr. Adler's remarks is that they presuppose (much like the Patent Office presupposes) that the problems with the U.S. patent system are caused by patent applicants and their counsel. (This is a little like saying the problem with poverty in this country is poor people.) It is likely that almost without exception American patent applicants want "quality" patents, if the term "quality" is defined as patents containing sufficient disclosure and claims of appropriate scope to satisfy the statutory requirements of patentability. There are a number of practical reasons why this is so. The most obvious is that a patent that fails to satisfy these requirements is invalid, and no one wants to incur the significant costs of trying to enforce an invalid patent. Moreover, Rule 56, the duty of candor, and the threat of an inequitable conduct charge provides ample incentive for applicants and their counsel to provide to the Patent Office whatever information is known to them. The frequency with which inequitable conduct is charged in patent cases (Judge Markey's "veritable plague" has only gotten worse in the intervening 20 years since he made the comment) has resulted in some inefficiencies such as providing cumulative references to the Office. However, this practice is self-correcting since it is at least as likely that overciting cumulative references will provoke a charge of "hiding" the most relevant art from the Examiner. In actuality, of course, most criticisms on these grounds come from failure to cite a critical reference, putting into question the significance of cumulative reference citing to any patent "quality" problem.
Mr. Alder and the IPO are apparently victims of the sea change that the current Patent Office management has effected in the relationship between itself and its customers. The IPO has been for 35 years at the forefront of efforts to facilitate applicant/PTO interactions and cooperation, sponsoring numerous conferences such as the annual PTO Day every December. Cooperation, however, is not the hallmark of the current Patent Office regime. As is evident to anyone who has read the proposed continuation and claim limitation rules as they were published for comment in January 2006, or attended any of the "town hall" meetings held by Commissioner Doll and Mr. Taupin, the Office's legal counsel, or read the Office's reaction to the comments in the rules as promulgated on August 21st, or read the Office's briefs submitted to the District Court or considered their argument at the preliminary injunction hearing, Patent Office management has identified the enemy and they are patent applicants and their counsel. It is understandable that an organization like the IPO with a history of fostering cooperation with the Office could be caught unawares by this Patent Office about-face, and have difficulty responding to the new reality (at least for now). But it is equally true that the IPO needs to consider these new realities and the impact that it can have, as a preeminent voice of intellectual property owners, when it speaks about patent "quality." These days, doing so undermines the very people it intends to represent.
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