DISCLAIMER: NONE OF THE FOLLOWING CONSITUTES LEGAL ADVICE
If you are a patent lawyer, get to the point by skipping to “my argument” below
A little background
Patents are granted based on what is “claimed” in the applications. Claims are heavily scrutinized, short sentences that are the sole source of all that the patent protects; all the other details in a patent merely provide evidence for how to construct the language of the claims. So you could imagine there would be a large incentive to make the claims as broad as possible, while still being able to get the application approved by the US patent office. However the caveat is that any “prior art” invalidates the claim. “Prior art” can be any public info—whether magazine article, scholarly publication etc— available more than a year before the application was filed that would have rendered the subject matter of the patent obvious to someone in the business. Drafting the claims broadly is a catch-22. One the one hand you can cast a ridiculously wide fishing net and catch more “infringers” than you ever could with a narrowly construed claim. On the other hand, you are also catching more invalidating “prior art” with the wide net than you would with the small net. A judge once said that the stronger the patent the weaker its protection, and the weaker a patent the stronger its protection.
My Argument
The US patent office is completely overwhelmed with applications, some of which can take 3 years or longer to get an initial review. So the time spent reviewing each application is necessarily limited. And while they have specialized expertise in construing claims, they are simply incapable of reviewing the entire prior art the way an interested (read: with money at stake) party would. So what happens is that a lot of patents that should have never seen the light of day actually have a small chance of being granted, usually with a good deal of amendments.
Can a patent examiner really search on Google and find a paper on SSRN written by a university professor in Vienna, five years before that is valid prior art, when she is first coming across the subject matter of the application and has only an hour and a half to review it? There’s no way.
So she will do a reasonable amount of diligence during the review, and grant the patent as presumptively valid.
Now fast forward a few years when the patentee is waving their patent around to try and sue a few infringers. Once the case gets to court, then and only then does the patent REALLY get scrutinized for validity. That is when the interested parties (interested in not being held liable for patent infringement) have every incentive to tear down the reams of all prior art, and finding every piece of damning evidence they can to invalidate the patent as having been obvious to “persons having ordinary skill in the art”. The overly broad claims can then be invalidated.
All is well and good except that the patentee got a day in court they never deserved, and wasted everyone’s time and money; save for the IP lawyers on both sides, who get to have a fun time playing patent ping-pong together.
So we have a situation where the only time a patent’s claims is zealously scrutinized on both sides, is once it is actually being litigated. The US Patent Office is outsourcing due diligence expense to the litigation process, and forcing private individuals and companies to bear the brunt of the cost.
To make matters worse, many patentees will sit on broad claims they know is not worth a penny pursuing an infringement claim for, but they figure that if anyone should have the patent, it should be them. This perpetuates a cloud of uncertainty about what is valid and what isn’t while never truly getting to the heart of whether the patent is valid.
Granted, good IP lawyers can provide a reasonable degree of certainty as to the enforceability of individual provisions; so with good counsel the visibility can be quite good. Patent litigation has merely become a cost of doing business for successful technology companies.
A solution
Before the tea party comes knocking on my door, no, I am not advocating increasing government spending so that we have a well-endowed patent office with superstars spending 20+ hours on each application while fiddling with Herman Miller chairs and catered lunches.
When a patent is granted, there should be a 6 month window where anyone who is interested in shutting it down with prior art can come forward and show their cards. A process akin to a preacher asking if anyone objects to the marriage. Interested individuals and companies can come forward or forever “hold their peace”. It is almost like litigation in advance, without excessive cost of uncertainty.
That’s my two cents.
Just as a side note; there already is a method for sending in prior art to the patent office while an application is being processed, but good IP lawyers would advise NEVER to do this, because what might not be fully appreciated by the overworked folks at the patent office, will likely be highly appreciated by a reviewing court. However if the patent office notes that they have already looked at the prior art and granted the application in spite of it, then it is useless in court. You basically have to keep your cards up your sleeve; even when you know with 100% certainty you can play them and win.