On Monday the Senate confirmed Andre Iancu as director of the U.S. Patent and Trademark Office, an office that most Americans barely know exists but that will deeply influence how well our country does at what it has long done better than anyone else — innovate.
An efficient, well-functioning patent system is among America’s most powerful levers for maintaining its global pre-eminence in R&D investment and productivity. But in this age of ever more sophisticated and complex technologies, the Patent Office is sure to make mistakes. Iancu’s challenge will be to maintain and strengthen two essential pillars of patent quality: efficient post-issuance review to weed out bad existing patents and rigorous examination of patent applications to strengthen the quality of new approvals.
A major step in bolstering quality control was the creation in 2011 of the Inter Partes Review process, a part of that year’s America Invents Act. Without the IPR process, patent granting would be biased toward error. The time that an examiner can devote to each application is limited, on average 19 hours per application. Applicants are not required to conduct prior searches, so gathering evidence can fall entirely on the examiner. And the burden of proof falls exclusively on the examiner, who must demonstrate that a patent should not be issued. No wonder that a 2010 study reported one junior examiner saying, “Rather than doing what I feel is ultimately right, I’m essentially fighting for my life.”
A 2017 study reported that patent allowance decisions are affected by Washington, D.C., weather: A review of 8.8 million Patent Office decisions between 2001 and 2014 showed a statistically significant correlation between unusually warm days and patent allowance rates — and a similar correction between cold days and final rejection rates. The study’s author concludes, “These effects constitute a decision-making bias which exists even after controlling for sorting effects, controlling for applicant-level, application-level, primary class-level, art unit-level, and examiner-level characteristics. The bias even exists after controlling for the quality of the patent applications.”
The IPR proceedings have helped to restore predictability to our system. They provide a fair, balanced, and fast procedure, giving the Patent Office a second chance to consider whether an initial decision to grant a patent was correct. Was the invention a breakthrough? Was it truly unprecedented? Did it genuinely not overlap existing patents or practices? At the same time, IPR proceedings also support quality patenting on the front end. They create incentives for applicants to find the best prior art and distinguish their claims accordingly.
Iancu’s top priority should be to protect the integrity of this process. Proceedings are not even started unless the Patent Office finds the patent grant was likely to be erroneous. Over 99.8 percent of all active patents and over 80 percent of litigated patents never face a review. And when all is said and done, the Patent Office and the courts have come to different conclusions regarding only a handful of challenged patents in which they heard similar evidence on comparable statutory criteria — a much higher level of agreement than that seen between trial courts and appellate review.
Of course, the patent examination itself remains the bulwark against the issuance of invalid patents. Iancu knows that the Patent Office needs to improve its ability to distinguish between worthy and unworthy patents the first time around.
A fairer and more efficient patent review process must include reformed examination procedures that measure and reward thorough examination to prevent the issuance of bad-quality patents. The Patent Office should continue the work of the Enhanced Patent Quality Initiative and its efforts to create a culture of quality. It must provide strong enforcement of requirements for tech-related patent applications. It must improve its IT infrastructure so that examiners can access the best prior art, collaborate across the examining corps and support international work sharing.
Innovation has thrived since enactment of the America Invents Act. R&D spending, venture capital investment, and start-up activity in the United States have climbed. R&D investment in the software and Internet industries has grown faster than any other industry. The economy of the 21st century is an economy of ideas. American innovators have demonstrated the ability to lift ideas out of the labs and off the drawing boards, and onto the American workplace. Strong and effective patent protection gives innovators the confidence they need to innovate — and bolster the U.S. economy of the future. Iancu’s success in preserving and strengthening the system that produces those protections will shape the quality of American life for generations to come.
John Thorne is a partner at Kellogg Hansen and general counsel of the High Tech Inventors Alliance, an association of Adobe, Amazon, Cisco, Dell, Google, Intel, Oracle, and Salesforce.
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