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Message: Administration Seeks Overhaul of Patent System

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The Bush administration wants to reform the nation’s patent system by requiring better information from inventors and allowing public scrutiny of applications, according to the director of the government’s patent office.

The goal, said Jon W. Dudas, director of the United States Patent and Trademark Office, is to improve the quality of patents, which should curb the rising wave of patent disputes and lawsuits. The legal wrangling is often over broad descriptions of ideas or activities, so-called business methods, or software that contains only incremental changes over prior work.

“There ought to be a shared responsibility for patent quality among the patent office, the applicants and the public,” Mr. Dudas said in an interview yesterday. “If everything is done right at the front end, we’ll have to worry a lot less about litigation later.”

Some steps to improve patent quality will require changes in the law, said Mr. Dudas, who will present his views to the Senate Judiciary Committee today. Both the Senate and the House have introduced patent-reform legislation this year, amid concerns that the current overburdened, litigation-choked system is hampering innovation rather than encouraging it.

One key change, Mr. Dudas said, would be a legal clarification of what is required of patent applicants. Under current law, an inventor is required to explain why a new product is sufficiently original to deserve the exclusive rights that patent protection conveys. But the applicants have a lot of discretion. The supporting information, Mr. Dudas said, ranges from “almost nothing” to what he called “malicious compliance,” which he described as boxes and boxes of background information intended mainly to obscure the nugget of an invention in the patent application.

Reform legislation, he said, should require the applicants to conduct a thorough search of related patents and technical journals, and then explain why the patent being sought represents a significant innovation beyond previous ideas in the field.

Mr. Dudas said the reform legislation should also make sure the search and information disclosures do not put an unfair burden on inventors who are not wealthy. Personal income, number of patents filed and other measures, he said, could be used to determine who would be exempt from certain requirements. “For the truly small inventor, we might do the search for them,” he said.

The patent office is experimenting with the concept of opening the examination process to outsiders, inviting public peer reviews. On June 15, Mr. Dudas said, the patent office will begin a pilot project for open reviews of software patents. The patents in the pilot program will be posted on a Web site, and members of the public with software expertise will be allowed to send the patent office technical references relevant to the patent claims.

But the pilot project applies only to patent applications in the field of information technology, and only with the approval of patent applicants. Legislative changes would be required to have public peer views without an applicant’s approval, and thus to extend the concept to other fields.

The patent office has been putting its own quality initiatives in place in recent years. And it has hired more patent examiners, adding 1,200 examiners last year to bring its staff to more than 5,000. The percentage of patent applications approved in the first quarter of this year was 49 percent, down from 72 percent in 2000. “We’ve taken steps, and the result has been that a lot more patents are rejected,” Mr. Dudas said. “But those numbers also tell you there are a lot of bad patent applications.”

The patent office, said Josh Lerner, a professor at the Harvard Business School, has made a real effort to improve patent quality in the last few years. But Mr. Lerner questioned whether Mr. Dudas’s current proposals amounted to relying too much on getting better information from applicants.

Mr. Lerner said inventors are instinctive optimists who tend to believe that what they are doing is unique. Yet even discounting any self-serving bias, he said, the growing complexity of technology makes it more difficult for a single person — applicant or examiner — to assess the innovative merit of a patent claim.

“That’s why I think really opening the examination process to public peer review is so important,” Mr. Lerner said. “While the patent office has shown a willingness to experiment with openness, I would put that at the center.”

 


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