June 13, 2008 | By Emily Berger

The Patent Office Can’t Do It All Alone: Public Participation Is Key to Ensuring Patent Quality

It’s not news that there are patents out there that never should have been granted. Whether it’s the “invention” of entertaining a cat with a laser pointer, combining two well-known car features in a manner that offers no unexpected new outcome, or selling CDs of a live concert immediately after the show, the patent office allows some bad patents.

Our Patent Busting Project takes this problem on by asking the patent office to “reexamine” patents – that is, to consider again whether those patents should have been issued in the first place in light of prior art (ideas that existed before the patents) that we’ve located and brought to the patent office’s attention.

And in March, while the Patent Reform Act was still on the Senate’s schedule, we commented on the value of one form of reexamination known as an “ex parte” reexam (the only form of reexamination available for older patents) and provided some statistics. Dennis Crouch, who maintains a blog on patent law read by much of the patent law community, also recently evaluated ex parte reexaminations and provided some nice demonstrative graphs.

The data shows that in over three-fourths of ex parte reexaminations, the patent examiners narrow or cancel the patent claims in question, meaning that the prior art introduced during reexam usually has a dramatic effect on the scope of the patent. On inter partes reexamination (a newer type of reexamination in which the party seeking reexamination is allowed to play a greater role), many of the patents end up completely obliterated -- 64% of all such reexamination requests resulted in canceling the claims altogether. When patent claims that aren’t actually novel are canceled, the patent owner can no longer exclude others from making, using, or selling something that he never invented. And when patents do teach novel ideas but were written with too broad of a scope, narrowing those claims can prevent meritless claims of patent infringement.

EFF is releasing a report finding that there are at least three ways to work toward improving patent quality, including through reexamination:

1. Encourage Organized Efforts to Have a More Thorough Review of Patent Applications

  • Increase third party efforts to improve prior art searches and to facilitate a stronger understanding of the world of prior art.

2. Support Organized Efforts After Patents Have Been Issued

  • Reexaminations should be limitless in time and with no financial harm limitations (in many countries, public interest organizations like EFF are only allowed to challenge issued patents for a short period of time after they have issued, even though often a patent’s threat to innovations may not be immediately obvious).
  • Don't Streamline. Maintain a variety of options for reexamination requesters.

3. Increase Access to Information in the Patent Office

  • Update information in the patent office’s online databases regularly.
  • Conduct and publish regular evaluations of effectiveness and performance within the Patent Office.

In addition to providing an organized effort through the Patent Busting Project in furtherance of the second goal, EFF is working in conjunction with Mozilla, Yahoo, and the Internet Archive to create a database that will work to achieve the first goal. This Prior Art project is still under development.


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