While we don’t always see eye-to-eye with TechDirt’s Mike Masnick on issue of intellectual property, he has a great post today entitled, “Why Shouldn’t Competitors Be Able To Weigh In On Patent Applications?“
In the article, Masnick suggests that:
Another way to test obviousness to those skilled in the art would be to actually let the patent examiner get opinions from others skilled in the space as to the obviousness of the idea. Unfortunately, current law actually forbids letting those skilled in the art from providing their opinions on patent applications — which is why some are now calling for the law to be changed to allow those who work in the space to provide their opinions (or even to protest) new patent applications before they are granted. Given the purpose of the patent system, and the requirement that patents be non-obvious to those who actually know the area in question, this seems only reasonable.
We couldn’t agree more! There is nothing more important to ensuring patent quality than improving pre-grant procedures and allowing for more input into this system.
The problem, however, is a little more complicated than it sounds.
To begin, let me clarify that Masnick is not quite right when he says that “current law actually forbids letting those skilled in the art from providing their opinions on patent applications.” Rule 99 does allow for submission of this prior art, but it effectively neuters the option for three reasons. First, the submission is made without comment, so the submitter cannot tell the examiner why it is relevant. Second, the window for submission is only 2 months long. And third, and most importantly, is the fear of being stopped from using that prior art in the future. Essentially, if you submit prior art during this period it can be used against you in the future. If the patent is approved, then it becomes part of the body of prior art that SUPPORTS the patent. It has effectively been “asked and answered” despite the fact that the submitter wasn’t able to effectively argue their case before the examiner. No sane company is willing to entrust their defense completely to a patent examiner with a meager 20 hours of time to devote, so this option is almost never used.
Where things get really tricky, however, is creating a solution that effectively navigates the Estoppel provision, the dangers of prior art flooding, managing inequitable conduct, and the internal incentive systems for patent examiners.
Essentially it ain’t easy, But as my Mom used to say, “Anything worth doing in life takes hard work.”