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Campaigning for patent reform

Posted: 10 Feb 2009 ?? ?Print Version ?Bookmark and Share

Keywords:reform patent PTO?

Office clean up
The problems at PTO are apparent to any engineer using it.

"I had a patent that took eight years to issue that was approved last year," said Steve Perlman, one of the inventors of Apple QuickTime and the WebTV set-top box who has testified before Congress on patent reform.

"I had another one that waited five years before a patent examiner took a first look at it in 2008. The file was not even opened for five years. There's a lot of stuff you file that will just not be significant in five years," he said.

The numbers speak: summary of cases filed.

The situation is not expected to change, in part because the PTO is focused on reducing wait times rather than discharging all its applications, said Ron Katznelson, a holder of 25 patents.

"In its latest plan, the patent office projects that in 2012 it will receive 563,700 applications, but would dispose of only 526,300," said Katznelson. "Even in 2013, the last year of the [current] plan, the PTO does not plan to catch up with incoming application rate."

Continuation claims added to a patent after it is granted also have become an administrative nightmare. The PTO issued a rule making an effort to limit continuations, but this is being challenged in court. Katznelson said shortening product cycles in the industry make continuations increasingly important.

Despite the obstacles, IBM became the first company granted more than 4,000 U.S. patents in a single year during 2008.

IBM said its researchers will work on a project to come up with an objective measure of patent quality, a long sought and elusive goal. It also will publish more of its innovations this year rather than seeking patents.

The U.S. Chamber of Commerce has called for sweeping changes at the patent office in a report filed late last year, authored by several experts including Dickinson.

Reworking the process
"I've never seen [the community of patent stakeholders] as polarized in my 30 years of practice," said Dickinson. "The various interests are so out of line there's a failure of trust, and that has to be addressed before you can do reform," he said, citing the suit against the office's ruling on continuations.

Beyond fence mending, Dickinson outlined several ways to rework the patent process. Examiners need to be given more than the 15-20 hours allowed for each application, a costly move that may require structural changes to the system, he said.

Dickinson backs expansion of a pilot program that lets peer reviewers find prior art for applications before they are submitted to an examiner. He also called for other ways third parties can submit prior art on applications before they are granted, a move contested by small companies who fear large corporations will swamp their applications while still in process.

Like many observers, Dickinson said the PTO needs more money to expand and upgrade its staff, computers and databases. "We have stopped diverting patent fees on an annual basis, but we need to stop it on a permanent basis," he said. "Once we end fee diversion, we can talk about increasing fees, and I think the larger stakeholders will be open to that."

"Obtaining a U.S. patent is still about five times less expensive per claim than obtaining a European patent," said Katznelson. "The PTO underestimates what it takes to build a competent and reliable patent examination system--and it shows."

Fees to obtain or renew a U.S. patent can be as low as $1,000, although applicants typically spend more than $20,000 on attorneys to handle the work.

"I'd like to see at least a doubling or more of maintenance feeseven a ten-fold increase might not be too much for renewal fees," said Michael Meurer, professor of law at Boston University. "If fees were increased and more burden placed on applicants, it would counteract the explosion in applications and grants," he added.

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