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Hi, I'm a patent examiner. I won't apologize for the agency, we have more than our share of problems, but I also think we get more than our share of criticism for bad patents. The PTO simply has no ability to change patent law. We apply it as it's written by Congress and interpreted by the courts. A few points on the law without getting into criticism of the agency (you can get easily find that elsewhere): 1. The burden on patent applicants is too low. There's a presumption that a patent will issue as soon as it's filed. The patent examiner has to prove that whatever is claimed was obvious, didn't work, wouldn't work, etc. If the patent examiner can't meet that burden, the patent issues. The patent applicant doesn't have to tell us about the state of the art prior to the "invention", what the improvement is, or why it deserves a patent. 2. As discussed upthread, the obviousness standards are too low. If you can't find evidence that each and every aspect of a claim was in the prior art, you have to allow the patent. Even then, a patent attorney can attack the rejection if the different prior art documents wouldn't fit well together. As an examiner, you can't simply say that something would have been obvious, with no supporting evidence. If you try to make such a rejection, the patent attorney will appeal your rejection, you'll get reversed on appeal and the patent will issue anyway. 3. The process naturally skews towards patent applicants. Most (nearly all) patent applicants have an attorney who is fighting 100% for as broad a patent as possible. The examiner is supposed to be a neutral arbiter who applies the law in an evenhanded fashion. There's no party fighting for the public, pushing back hard against the patent attorney. It's like a courtroom where only one side of the story is presented. You can find a lot commentary/criticsm of the patent examination process online BTW, but not generally on the tech sites - look more towards legal/academic literature. (Speaking on my own behalf, not the agency's) |
I agree that the law needs to be changed. Instead of the burden of proof being on the examiner to prove obviousness -- which is basically impossible, as it's a subjective judgment -- I believe we should place the burden of proof on the applicant to show objective evidence of nonobviousness. 35 U.S.C. ยง 103 (http://www.law.cornell.edu/uscode/text/35/103) needs to be clarified to establish that the burden of proof falls on the applicant (during the application process) or plaintiff (in an infringement proceeding).
We already have a pretty good list of some things that could constitute objective evidence of nonobviousness; see http://en.wikipedia.org/wiki/Graham_v._John_Deere_Co. [the trailing period is part of the URL]. To these we could add publication in a peer-reviewed journal or conference proceeding.
I'm not necessarily suggesting that a patent couldn't be granted absent such evidence -- an applicant might reasonably argue that there has not yet been time for her invention to have enjoyed the commercial success that would constitute one kind of evidence. In any case, a granted patent should be annotated with the evidence provided; if the patent is later litigated, the court should review that evidence and allow additional evidence to be presented. If the evidence at the time of litigation were still insufficient, however, an infringement suit could not proceed.
I think this requirement would not much affect most fields other than software. For a drug patent, for example, the applicant could simply list all the other molecular structures they tried that didn't have the desired properties. Most non-software patents have substantial R&D behind them; it would be sufficient to provide evidence of the work that was done.
It would make a huge difference in software, though. Mere novelty would no longer be sufficient. There would have to be some objective reason to believe that another person, faced with the same problem, would have difficulty coming up with the same solution.
I think this proposal addresses all three of your points. It would obviously increase the burden on applicants and patent holders. It would reverse the burden of proof on obviousness. And it would give the examiner -- and then the defendant, if the patent is litigated -- a powerful way to push back against the applicant/plaintiff.