28th aug, 2009

How should we improve the patent system?

Today I had the pleasure of reading “Understanding Patent Quality Mechanisms” by R. Polk Wagner University of Pennsylvania Law School. That paper is one of the most inspiring works on how to attack the problem of patent quality I have ever read. It is a must read. A strategy towards improving the patent system must focus on these incentives.

Wagner’s thesis is that decreasing patent quality is caused by incentives that encourage low quality in the current system.  The incentives identified by Wagner are:
(1)  incentives that encourage patentees to draft patent applications that effectively obscure the true scope of the invention and its relationship to the prior art 

This is caused by under information from the applicant  to the office regarding applications, unclear scope of patent and a lack of time and resources to search the application. In my opinion if you should try and minimize the effects of these factors you would focus improving information available to the office (fx by including 3rd parties like the peer to patent project or imposing obligations of information on the applicant). Another initiative could focus on the administrative processes. Thirdly you could focus on narrowing the scope of patents either by determining specific claim language standards or abolish the doctrine of equivalents (this means (what’s not claimed is not covered and if you didn´t  think of a specific use it isn´t covered). (2)  incentives that lead the administrative agencies (the USPTO and other patent offices) to conduct relatively ineffective examinations of many patents 

This is caused by pendency pressure. An increasing number of patents pressure the USPTO to get more work done. Another cause is production goals of USPTO employees. In my opinion you cannot have production goals, if you have to measure your performance find other type of goals. Today many institutions focus on outcome goals instead of output goals. Also initiatives towards effective and innovative processes will be effective. Work sharing across borders and initiatives like patent prosecution highway are very important. (3)  incentives that compel modern innovative firms to adopt a high-volume, low-quality patenting strategy. 

This is caused by portfolio hedging and a continuing spiral where firms feel that they need more patents (arms race problem). Raising the bar for getting a patent may counter this. Initiatives towards enabling firms to value their IP could also help focus on what resources are wasted on bogus patent applications. 

Wagner discusses several solutions like increasing the number of examiners, improve searching, public access in the grant procedure and post grant opposition. An interesting proposal is punishing applicants for unclear applications. This could be done by imposing a fee for every change to the original application. This will in turn enhance reluctance to changing the wording but may be a possibility in my opinion.

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