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Should the patent office open its internal guidelines to the public?

Anyone following policy issues around technological innovation has noticed the power and scope of patents expanding over time. For instance, most people are aware of the Supreme Court’s decision to allow the patenting of genes. Computer experts are more concerned about the decisions to patent software. Many forces contribute to the expanding reach of the patent system over time, and to understand them better I recommend a thoughtful, readable summary by law professor Melissa F. Wasserman.

Wasserman argues that the patent office, the appeals court that reviews its decisions, and even Congress have incentives to keep expanding patents. Her anecdotes strike home and her reasoning is lucid, although of course we lack experimental methods for testing her hypotheses. (That is, we can’t prove that patent examiners or courts were biased by looking at statistics.) I think you’ll find her article quite readable, with most of fussy legal language relegated to the footnotes. (I heard about the article thanks to an email from Harvard Law School’s Petrie-Flom Center for Health Law Policy Biotechnology and Bioethics.)

As a simple example of the bias toward extending patents, consider that nobody ever appeals a patent examiner’s decision to grant a patent, but aggrieved applicants often appeal decisions to deny a patent. And defending the decision to deny a patent costs the patent office a lot of money, which it can’t make up from fees. Because the appeals court hears of dubious decisions only when a patent it denied, it has no opportunity to say, “Woah there, stop expanding the patent system.”

But it gets even worse. Wasserman offers several subtle reasons why having a denial reversed hurts the patent office, whereas it hardly ever suffers if a patent is successfully challenged years later.

One of the most interesting observations in the paper–which Wasserman makes briefly in passing, on page 14–is that the administrators of the patent office provide guidance to examiners in a number of internal memos that are never exposed to the public. Here is a cause for open government advocates: show us the memos that contain criteria for approving or denying patents!

Wasserman is not unsympathetic to the patent office. On the contrary, she takes raises the question above the usual cries of “poor, overworked examiners” or “corporate-friendly, biased judges” and finds systemic reasons for today’s patent bloat. These range from making it easier to challenge a patent right at the start to overhauling the funding of the patent office so it gets the support it needs both for approving and denying patents.

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  • http://gametimeip.com/ Patrick

    Mr. Oram,

    To answer the question in your title, they have.

    Additionally, you seem to be missing some key information about patent examination, re-examination and appeals. Your readers deserve to know the facts:

    http://gametimeip.com/2011/06/03/oreilly-radar-desperately-in-need-of-patent-wd-40/

  • Nobody

    I have always thought that the counter-pressure on the Patent Office should be liability for wrongly issued patents.

    If a structural engineer certifies a house won’t fall down, and it does, they are liable.
    Doctors can be struck off for medical negligence, yet Patent office is rewarded with re-examination fees???

    Why should the patent office issue a professional decision it won’t back? They need to be fully liable financially, and also need to turn a profit.

    The fee they charge should represent the risk of issuing the patent. A broad or vague patent should cost a lot more because it’s less likely to stand and more likely to cause problems.

    And why only 1 patent office? Why can’t any professional body specializing in their field issue a patent?

    The engineering bodies can issue engineering patents, the medical bodies, medical ones. The specialist body in the field issue patents.
    They charge what they want, you are free to get your patent from any body prepared to issue them, it is nothing but insurance.

    A patent trolls sues a company and loses, the company claims damages from the patent office that issued the patent. If they go out of business, well they didn’t issue their patents very well, their patents die with them unless some other body is prepared to pick up the patent insurance and re-issue it.

  • http://praxagora.com/andyo/ Andy Oram

    Patrick, it’s wonderful that you took the time to put up all that information, and I appreciate it even though it criticizes the article. The Manual of Patent Examining Procedure is really cool. Wasserman covered it in her article, and it does offer the kind of guidelines I’m asking for, although she is not entirely happy with the process behind it.

    The other major question on the table is whether there’s an evenhandedness in challenges to granted patents and rejected applications. There are huge differences, which cover a lot of different areas–the patent examiner, the board of appeals, the courts–which I don’t try to fully cover. Litigating a patent once you’re sued for infringement is a lot different from being able to contest the awarding of a patent. So far as challenging the patent at the time it’s awarded, my impression–and I did check around somewhat–is that you can’t challenge a patent grant that effectively expands the reach of the patent system, which is the subject of Wasserman’s article an my blog. You can just challenge prior art.