Here I post with permission a recent post from Hal Wegner describing his views on patent reform following the Japanese model--I cheerfully note that he has pretty much the opposite idea as to what priorities should be that I do. Sigh. I am doomed to forever disagree with everyone about everything.

The PTO is now in the process of seeking to hire literally thousands of new Examiners that cannot possibly be shoe-horned into the already Taj Mahal-like edifice at the Carlyle, forcing it to look to create a cottage industry of examiners spread everywhere around the United States with the proviso that they periodically make brief returns to Alexandria.

The Japan Model: A possibly better model is Japan where the Japan Patent Office (JPO) has done a far better job in patent quality control and efficient processing of its applications through a combination of factors, inter alia, a very tough post-grant review system that provides a disincentive to gain marginal patents coupled with a default deferred examination unless there is a special request for early examination.

29 % Tokyo Allowance Rate: While empiricists quibble over whether the U.S. allowance rate is somewhere near 70 % or even higher than 90 %, it is clear that in any event the American system with its wide variety of quality and training and other factors is letting out far, far too many patents of questionable merit. Japan, to the contrary, provides the lowest allowance rate of any of the three major patent granting authorities in the world. As seen from the attached statistics released by the JPO, the allowance rate for 2005 is a mere 29 %, a figure that has remained constant for several years.

Two Administrative Reforms the PTO Should Initiate Immediately: The PTO can do much on its own through administrative reforms to take advantage of the benefits shown by the Japanese success:

First, the PTO can and should take up for examination all cases in turn based upon the filing date (absent a special request by the applicant for expedited examination), and publish in the Official Gazette (or on line equivalent) the date at which cases will be taken up for action. (In this way, there should be no mad rush to get an IDS and other information to the PTO before an arbitrary and very early date, permitting applicants time to consider prior art information that is evolving from parallel prosecutions and other sources. The deadline for any IDS or other pre-examination filing should be the date published in the Official Gazette.) If there is, say, a 3.5 year backlog, this will then give applicants 3;5 years to defer examination.

Second, the PTO should (a) abandon its unnecessarily narrow 1980 interpretation of the statute for ex parte reexamination and permit routine, expedited third party participation that is nowhere excluded by the statute which will not delay prosecution in an era of electronic Office Actions and Amendments; (b) assign the very best lawyers possible to deal with all reexaminations, possibly hiring outside senior litigators seeking to wind down their practice; and (c) above all, establish extremely tight deadlines to meet the "special dispatch" requirement of the statute (a goal that an experienced litigator would know how to enforce).

Statutory Reform – Focus on the Key Issue, the Post-Grant "Second Window": Manifestly, the single most pressing need for patent reform that dwarfs everything else is establishment of an efficient, tight inter partes post-grant review under a "second window" system to permit a challenge at any time in the life of the patent.

Unless and until this reform takes place the patent community is whistling in the dark about patent reform. To the extent that other legislative reforms are being considered in addition to such an efficient, tight inter partes post-grant review under an "open window" system, this diffuses attention from the principal issue that must be resolved if the nation’s business community is to regain faith in the patent system. Japan, too, grants bad patents from time to time, but there is hardly any stir in the business community: An aggrieved party simply chooses to take an administrative patent revocation directly to the JPO’s Board of Appeals under the law effective January 1, 2004 or seek a declaration of invalidity from the hard-ball and patent-wise Tokyo District Court – or both.

Regards,

Hal

posted by Solveig Singleton @ 12:07 PM | Patents

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