USPTO Administrator Arti Rai Responds to Patent Docs Post on PTO White Paper

Last week, Patent Docs published a post on the recent White Paper issued from the U.S. Patent and Trademark Office regarding provisions contained in the "Managers' Amendment" of the Senate patent reform bill (S. 515) (see "USPTO White Paper Supports Patent Reform Proposals").

The first author of that Paper, Ms. Arti Rai (at right), Administrator for External Affairs for the USPTO, has now graciously responded to the post, pointing out areas of agreement and disagreement with the views expressed in our post.  We are grateful for her continued input, and post her response here to further the discussion.

A response to Kevin Noonan:

We read with interest Kevin Noonan's comments ("USPTO White Paper Supports Patent Reform Proposals" in www.patentdocs.org, April 22) on the Department of Commerce white paper I co-authored with Mark Doms and Stuart Graham on patent reform, innovation, jobs, and economic growth.  While some of Dr. Noonan's assertions relative to the white paper seem misplaced, others are fair and underscore the need for additional research in this area of inquiry.

The intended audience of this white paper is not, as Dr. Noonan suggests, a "technology-savvy audience" but rather the broader public audience.  The important role technology improvements play in economic growth, job creation, and increased standards of living are not – regrettably – as widely appreciated as Dr. Noonan suggests.  The role that a well-functioning patent system plays in spurring technology improvements and enabling the diffusion of innovative goods and services is even less widely appreciated.  The white paper aims at educating the broader audience about these two extremely important points, and at highlighting the potential economic benefits of certain aspects of patent reform legislation.

In many of his criticisms, Dr. Noonan faults the paper for including too little theoretical or empirical evidence to support its arguments.  While we readily acknowledge that in some areas the evidence is underdeveloped, our conclusions are based on the best available evidence.  And in many circumstances, like the research supporting post-grant review, we believe the evidence to be overwhelming.  There are also instances in which Dr. Noonan asserts a lack of evidence where the evidence is in fact provided in the cited materials.  Additionally, we note that in all but one instance in which he claims that cited sources are not publicly available, they are -- in publicly available sources like the Social Science Research Network (SSRN).  His own links to the materials reflect that.

Nonetheless, Dr. Noonan is correct in recognizing that the evidence is not complete and that that there is a clear need to augment the literature on the relationship of patenting to economic activity.  That is precisely why Director Kappos established the first-ever Office of the Chief Economist at the USPTO, and why we are so pleased to have Dr. Stuart Graham on board.

We thank Dr. Noonan for his thoughtful comments as we work to improve the functioning of the patent system and to do further economic analysis in this critical area.

Arti Rai
Administrator for External Affairs
United States Patent and Trademark Office

Comments

[EG]

Kevin,

I give Arti credit for at least graciously responding to your article on the White Paper. I don't necessarily agree with her assessment of what you said, but I do respect her for reasoned and civil argument in defending the White Paper.

[Dan Feigelson]

Kevin, given the time you spent analyzing their report and writing up your criticisms, it's a shame there's no substance in Ms. Rai's response. EG and others, am I alone in finding her response curt to the point of being rude?

[MaxDrei]

Perhaps she wants the thread to run dry, before she ventures any substance. Only joking.

[General Admission]

Dan - To me it is more about the feel of maintaining a consistent message and not so much rude, which leaves us with a response that doesn't do much more than assert, "we've done our best with what we have available" (without including a 'Please understand,' at the beginning).

Her comment about trying to gear the paper toward a broader public audience seems to reinforce that feeling. Do they expect that 1000 people not involved in patent law will read the paper? 10,000? 10? Anyone who really cares about the implications will call up their in-house or outside patent counsel for a summary of what it means. You can't even motivate the general public to get educated about healthcare reform, and now we're supposed to believe they care about patent reform?! To me, one thing patent practitioners need to keep in mind is that the general public doesn't care about indepth understanding of real issues when it comes to patents (see, Myraid). Just tell them how much something costs in a snazzy soundbite and you've won the day.

[Skeptical]

DF,

But the response does have substance (just notthe substance that Miss Rai hopes to convey to her "target audiance".

Miss Rai points out that she thinks:
- some of Kevin's points are "misplaced" (not necessaily wrong, bit not convenient to Miss Rai's policy stand)
- some are fair (which ones?)
- that additional research is needed (we have a real economist on board now -since way back to possibly March 2010; so we need to put out our policy before the NEEDED additional research shows a lack of support for what is "academically" obvious).

My bottom line takeaway is that Miss Rai is acknowledging that this "White Paper" is a propaganda piece (intended audiance is the less savvy broader public) which is indeed pre-mature (the NEED for more research).

Miss Rai admits that the conclusions are based on "her best avialable evidence", meaning that this piece of naked advocacy may not survive a substantive and critical review, so they have to get it out now in hopes of affecting the policy they want, regardless of what the facts may show later. The shameless dismissal of an opposing view (Shane), listing that view as "anti-reform", is telling.

[Prior Art]

Without commenting on the substance of the response, me thinks its very positive to get a response from the Administrator for External Affairs, who has absolutely no obligation to respond. This indicates that (at least External Affairs) the PTO is monitoring public discussion on its positions. Mayhaps there will be greater dialogue between patent practioners and the PTO in the future.

And on to the substance of the response - Of course they're not going to say anything. The PTO isn't going to provide policy in a simple response. I'm sure Professor Rai would have plenty to say in response, but cannot say those things as administrator on behalf of the PTO.

[Dale B. Halling]

Where is the overwhelming evidence for post-grant review? The report only appears to review the cost of incorrectly granted patents. The report does not consider the cost of retarded technology progress because of nuisance oppositions. The report also does not consider the cost to the economy of patents that are incorrectly denied or indefinitely delayed in the patent office.

[MaxDrei]

Dale excuse me but what "cost"? Tell me again, how oppositions retard "progress". I assume the patent owner can assert the patent from the day it issues. Would not a "nuisance opposition" help rather than hinder a patentee in a hurry, by demonstrating publicly that the patent is valid as issued?

Does not the possibility for cost-effective opposition post-issue help Examiners to assuage their legitimate doubts and issue patents earlier than they do today?

[Skeptical]

"Does not the possibility for cost-effective opposition post-issue help Examiners to assuage their legitimate doubts and issue patents earlier than they do today?"

MaxDrei, I remain skeptical about your knowledge of US law and its application.

Doing the Job Right the first time PRECLUDES any need for an examiner to be "assuaged". Any so-called "legitimate" doubt must be backed up with results or the application permitted to issue. It's as simple as that. US examiners have been brought up on a culture of "reject-reject-reject" and EVERY application is doubted - legitimately or otherwise. Intimating that patents will be issued earlier because examiners can rely on a post grant mechanism to catch mistakes is polly anna in so many ways. Not only that, it actually reinforces the wrong type of "quality" (defining quality as speed of throughput).

[Kevin E. Noonan]

I am happy Dr. Rai took the time to respond. To clarify, the Paper itself contained three references that appeared to be unavailable to the public, which is why we asked that they be made available. As it turns out, two of the articles were available, as my intrepid editor discerned and included as links. Of course, these citations to SSRN were not in the Paper, and unfortunately left the impression (as mentioned in the post) that there was unavailable data that could be helpful in assessing the Office's position. Happily, that data is available (and while I'm sure economists and academics could find it, I'm not as sure that interested members of the public could - but that's another matter).

As it turns out, the only unlinked reference (or at least one we couldn't locate) is Dr. Graham's, and perhaps the Office will post that to make it available.

Thanks for all the comments, and for keeping the discussion on the merits.

[Kevin E. Noonan]

And to be clear, the paper we cannot find is this one:

Graham, 2010, "Slow courts and the cost of uncertainty: How patent post-grant reviews may offer a partial solution"

[6]

Hi 2 u Arti. Coffee later? Great paper btw.

[staff]

Rai backed the earlier proposed rules changes which would have doomed inventors. As before, she has no relevant experience and is unqualified. Just another political appointee in over her head.

Patent reform is a fraud on America. It is patently un-American.
Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.

[Kevin E. Noonan]

Dear staff:

Actually, even if you disagree with her (and we have), Dr. Rai is hardly just another political appointee. Recent history of truly political appointees (former Congressional staffers, for example) should teach us that. Dr. Rai bears the handicap of coming from academia, and thus may believe perfectly rational ideas that just turn out, in practice, to be wrong (or at least impractical to implement). After all, the drafters of the two previous re-examination statutes thought they would have a much more positive impact than they have turned out to have had.

Thanks for the comment (although it is getting a little formulaic). I appreciate your position, but "she ain't qualified" doesn't advance the debate - she is who she is and holds the position (and positions) she holds. Let's try to help her understand alternative views (since unlike the late unlamented Office personnel she might actually be open to hearing them).

[staff]

According to her bio at Duke...

http://www.law.duke.edu/fac/rai/

Rai is not a patent attorney, has never filed, prosecuted, litigated, or licensed patents. Like we said, she has no practical experience. Further, her support of the prior proposed rules alone indicates she has no sense of what will encourage innovators and thus innovation, OR she just doesn't care or has other motives. After backing such inventor crippling rules why would we want her or the PTO to be given more authority?

[staff]

If Rai truly wants to know the small entity side of these issues, she can contact us as below. We are willing to explain our side if she is willing to listen.

Professional Inventors Alliance
piausa.org
Ron Riley
202-318-1595

[Lawrence B. Ebert]

"Dr." Rai?

Separately, related to the quality of the references, one notes that SSRN articles are merely postings, not refereed journal articles. Further, given that law review articles themselves are typically cite-checked but not reviewed for content, one might ask whether law review articles are "refereed" or merely comprise gray literature.

Finally, Graham's CV page does not reference the paper you are seeking ["Slow courts and the cost of uncertainty: How patent post-grant reviews may offer a partial solution" ], tho Graham has written on post-grant review in other articles.

CV: http://mgt.gatech.edu/directory/faculty/graham/graham_vita.pdf

[Kevin E. Noonan]

Dear Lawrence:

You are correct, Professor Rai did not earn a doctorate other than a JD, and "Dr." is not the conventional appellation for that achievement. That error was mine alone; as a former academic I made an unwarranted assumption - my apologies, to you and Professor Rai.

My point is open exchange of information, and so even if not refereed, having the information available is useful. Hal Wegner earlier today cited Besson & Meurer's "evidence" that most innovation is done by big companies; since he cites their paper "supporting" this assertion, it is possible to review it and its conclusions that fly in the face of most patent practitioners' experiences. But it probably depends mightly on how "innovation," "success" and "large" companies are "defined."

Thanks for the comment.

[Skeptical]

It's a soundbyte war. That much is evident from the "target audiance" to the choices of what sources form the academic opinion.

In part, that's why the critical re-action to the USPTO's action (Although I do appreciate the efforts to keep the communication lines open Kevin).

[Gilgamesh]

ftp://ftp.zew.de/pub/zew-docs/veranstaltungen/graham_harhoff_paper.pdf

Would the U.S. Benefit from
Patent Post-grant Reviews?
Evidence from a 'Twinning' Study
Graham and Harfoff, June 2005.

This is not the unpublished paper cited, but I wonder why this was not included in the evidence about the post grant review process.