Last week the Patent Office (PTO) held its first-ever Patent Quality Summit – yet another indication of their focus on improving patent quality. The two-day meeting was intended to take a hard look at patent quality, evaluate PTO proposals, and brainstorm other ways to address this significant problem. This discussion is timely, as bad patents continue to stifle innovation. Startups have been victimized too often by patent trolls using low quality patents as fodder for sending baseless demand letters and threatening litigation to extort settlements.
At the conclusion of the summit, there was some general consensus among participants that:
- Overly broad patent claims are extremely prevalent. The former Chief Judge of the Federal Circuit went so far as to estimate that 70 to 90 percent of the patents he reviewed included at least some “grossly overbroad” claims, mixed in with solid and borderline claims. With about 3 million patents in force, this statistic underscores the extent of the patent quality problem.
- Quality has to start with the application itself and the conduct of prosecuting the claims in it. Patent prosecution lawyers are often overzealous in pressing for the broadest possible claims, even those that are clearly invalid. The PTO allows for many opportunities to wear down the examiner into perhaps accepting borderline or weak claims.
- Poor and incomplete recording of the examiner interviews undermines patent quality. Historically, the “record” has been lacking in sufficient detail. Patent lawyers press examiners into omitting things from the record so they can later claim that the patent covers more. Examiners are at a disadvantage when arguing with trained, often aggressive patent counsel, and may too often give in to their demands as a path of least resistance. As a result, startups -- and the public – are deprived of public notice of the specifics and scope of the patent that the law requires.
- Claim clarity is essential to quality. A clear record is what enables a court to properly interpret the claims. But it is also essential to putting other innovators and the general public on notice about the scope of the patent. This has too often been overlooked.
- Examiners need to make greater use of Section 112 - part of the law that ensures the “definiteness” requirement is met by the patent. Section 112 has been historically underutilized, allowing too many vague and overly broad patents.
Ultimately, examiners will need the strong support of the PTO’s leadership in order to effect any real change. The patent prosecution bar is not necessarily keen to accept changes that may limit their room to maneuver around the system, and to pursue the broadest possible claims. One speaker alluded to an “arms race of overly broad claims”. It is well past time to de-escalate this race, and shrink the often inflated scope of claims back to those that are valid.
Though the PTO has proposed improving the quality of “customer service” provided to applicants, it must be emphasized that the ultimate customer is the innovation ecosystem and the public. An excessive focus on the applicant often works to undermine quality in obvious ways. Therefore, the PTO should be guided by a focus on the public interest in making new rules to improve quality.