Charles Duan, 1 Daniel Nazer, 2 Ange Royall-Kahin, 3
Vera Ranieri, 4 and Julie P. Samuels 5
In its February 5, 2015 Request for Comments, the U.S. Patent and Trademark Office proposed to improve the quality of patents based on three “pillars”: excellence in work products, excellence in measuring quality, and excellence in customer service. 6 These pillars are intended to be the areas of broad focus that the USPTO will target to improve patent quality.
But the suggested pillars miss the importance of the USPTO’s work to the public as a whole, as argued by the authors in comments filed this month. 7 “Excellence to the Public” ought to be the central pillar of patent quality.
I. Protection of the Public Interest is Central to the Patent System and to the Mission of the USPTO
Excellence to the public should be the central focus of patent quality because the USPTO is an agent of the public and is responsible to said public. Patents are granted to serve a specific public interest, namely to “promote the Progress of Science and useful Arts.” 8 As the Supreme Court held, the public “has a ‘paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.’ ” 9 This paramount interest should be the starting point for all that the USPTO does.
Patent examiners are representatives of the public. 10 As former Federal Circuit Chief Judge Paul Michel explained at the USPTO’s Patent Quality Summit, the patent examiner “first and foremost is an adjudicator” of patentability and thus must act as “the guardian of the public domain” to prevent issuance of overbroad patents that might drag down industries and future inventors. 11
It is unfortunate that the USPTO’s quality efforts make virtually no mention of this public interest. Instead, the Request for Comments troublingly refers to patent applicants as “customers,” suggesting that the examiners’ duty is to applicants, not to the public. Even Judge Michel criticized the USPTO for this “customer service” language, noting that outside industries and future inventors—“remote customers”—deserved equal attention. 12 The current emphasis on “customers” is not the right approach to patent quality, in view of the public service role of patent examiners and the USPTO.
II. Low-Quality Patents Have Costly and Concerning Consequences for the Public Interest, Small Businesses, and the Technology Economy
If the patent system fails to work toward the public interest, and if low-quality patents continue to issue, then many serious harms will follow. Indeed, the issuance of low-quality patents in the past has already substantially harmed the public.
First, improperly issued patents restrict what ought to be in the public domain, and that is a serious loss itself. Central to all aspects of patent law is the idea that the promotion of innovation and progress depends just as much on what is not patentable as on what is patentable. 13 When invalid patents issue, “the public may continually be required to pay tribute to would-be monopolists without need or justification.” 14
Second, low-quality patents can impose undue costs on the public. Once issued, invalid patents are very expensive to invalidate. Patent litigation can cost millions of dollars, and inter partes review and other AIA proceedings may run an estimated $200,000 to $750,000 per proceeding. 15 These are substantial costs to innovators and the economy.
These costs are not merely theoretical: issues in the technology field demonstrate the public problems that low-quality patents create. It is well known that the software industry has suffered from a plethora of problematic patents. 16 Design patents have served as the basis for unfair and problematic patent assertion activities. 17 These activities more generally inhibit development of new technologies, particularly among small startups. 18 The widespread recognition of the ensuing patent crisis indicates the degree of the problem that such patents have caused.
Accordingly, protecting the public from low-quality patents is a necessary responsibility of the USPTO, in its mandate to protect the public and economy from substantial harm.
III. Patent Quality Should Be Defined in Terms of the Public Interest
The USPTO should work from a definition of patent quality based on the public interest principles described above. In particular, a high quality patent should exhibit the following four characteristics:
• The patent must not claim matter that is in the prior art or otherwise in the public domain, to avoid trampling on property reserved to the public.
• The patent must make its scope clear, so that the public has certainty as to what infringes the patent.
• The patent must include a complete file history record of interactions between the patent applicant and the examiner, so the public understands the thinking behind why the patent was granted.
• The patent must satisfy the statutory requirements, which are designed to ensure that the above three characteristics are met.
These characteristics should motivate all efforts toward improving patent quality.
The USPTO and its examiner corps are representatives of the public, and “the public . . . is demanding higher quality” in patents, in the words of Director Michelle Lee. 19 If the USPTO intends to seriously improve patent quality, it must focus its energy on creating data, training materials, and enhanced quality reviews targeted at reducing errors in allowances. Only then can we create a patent system that provides excellence toward its true customers, the public.
- Director, Patent Reform Project, Public Knowledge.
- Staff Attorney and Mark Cuban Chair to Eliminate Stupid Patents, Electronic Frontier Foundation.
- Program Manager, Engine Advocacy.
- Staff Attorney, Electronic Frontier Foundation.
- Executive Director, Engine Advocacy.
- U.S. Patent and Trademark Office, Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475, 6476 (Feb. 5, 2015).
- See Comments of the Electronic Frontier Foundation, Engine Advocacy, and Public Knowledge on Enhancing Patent Quality, 80 Fed. Reg. 6475 (May 6, 2015), https:// www. publicknowledge. org/ documents/ pk-eff-and-engine-comments-on-uspto-patent-quality-initiative.
- U.S. Const. art. I, § 8; see also Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24, 35 (1923).
- Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843, 851 (2014) (quoting Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 816 (1945)).
- See Smith v. Hayward, 193 F.2d 198, 199 (C.C.P.A. 1951) (“Every application for a patent is affected with the public interest…”).
- U.S. Patent and Trademark Office, Patent Quality Summit – March 2015 (Mar. 25, 2015), http:// livestream. com/ uspto/ Patent Quality Summit.
- See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156 (1989) (“[T]he efficient operation of the federal patent system depends upon substantially free trade in publicly known, unpatented design and utilitarian conceptions.”).
- Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969).
- See Meaghan Hemmings Kent et al., 10 Reasons Every Defendant in Patent Litigation Should Consider Inter Partes Review, Mondaq (Apr. 26, 2014), http://www.mondaq.com/unitedstates/x/309504/Patent/10+ Reasons+ Every+ Defendant+ in+ Patent+ Litigation+ Should+ Consider+ Inter+ Partes+ Review (noting that defending a patent case in federal court costs an “average of $530,000 – $3.6 million through the end of discovery, and $970,000 – $5.9 million through final disposition”).
- See Shawn P. Miller, Where’s the Innovation An Analysis of the Quantity and Qualities of Anticipated and Obvious Patents, 18 Va. J.L. & Tech. 27 (2013), available at http:// www. vjolt. net/ vol18/ issue1/ v18i1_ 1- Miller. pdf (hypothesizing that approximately fifty percent of software patents are either all or part anticipated or obvious.).
- See Larry Downes, Everyone Hates Patent Trolls, but Here’s the Root Problem with our Broken System, Washington Post, May 4, 2015, http:// www. washingtonpost. com/ blogs/ innovations/ wp/ 2015/ 05/ 04/ everyone- hates- patent- trolls- but- heres- the- root- problem- with- our- broken- system .
- See Colleen V. Chien, Startups and Patent Trolls, 17 Stan. Tech. L. Rev. 461, 473 & tbl.1 (2014) (noting that smaller startups have to pivot their business strategy or product in response to patent trolls).
- Patent Quality Summit, supra note 11.