The U.S. Patent and Trademark Office (USPTO) has responded to criticism that its system for approving patents is flawed.
That reproof was reportedly leveled at the office last week by IBM Vice President for Intellectual Property and Standards Jim Stallings at a media event in New York City.
At the event, Stallings told reporters that the Patent Office is being inundated with patent applications and it’s affecting the ability of examiners to adequately review applications, particularly their ability to review the history, or “prior art,” surrounding an invention.
Best Tools in World
Although critical of the patent office, IBM is a perennial leader in the number of patents garnered from the agency. Last year, Big Blue was awarded 3,248 patents, more than any other company, and made more than US$1 billion from its patent portfolio.
USPTO Deputy Commissioner for Patent Exam Policy Joseph Rolla told TechNewsWorld that the work load doesn’t have an effect on an examiner’s case research. “They spend the same time searching a case regardless of the workload that’s here,” he noted.
“Patent examiners have access to some of the best tools in the world and a great classification system. Our search tools give our examiners the best opportunity to find the most relevant prior art,” he said.
Attempts by TechNewsWorld for comment by IBM were unavailing.
Rolla said that patent applications have increased in recent times. “We clearly have a larger number of applications being filed, and that’s because there’s an increased interest in IP protection,” he observed.
He added, however, that to cope with the increasing demands on the office, Congress approved positions for 860 new examiners in the fiscal year 2005 federal budget.
IBM doesn’t stand alone in its views of the USPTO. Last April, the Electronic Frontier Foundation launched a “Patent Busting Project” partially predicated on the notion that patents harmful to innovation were being issued by the office because it was doing an inadequate job of discovering prior art.
“There are certain units within the Patent Office that are extremely short on the number of patent examiners because there are too many patent filings in their area,” Emily Miao, a patent attorney for McDonnell Boehnen Hulbert & Berghoff in Chicago, told TechNewsWorld.
She noted that many of the cases in the backlog involve software, electronics and telecommunications.
“The patent office is overwhelmed with the number of patent applications and they’re very short-handed,” she said. “This is a problem of long-standing in the patent office.”
Missing Relevant Art
Contributing to the office’s increased workload are a growing number of applications from abroad, Miao explained. “The U.S. being a major market for a lot of foreign applicants makes them like to file their applications through our U.S. Patent Office.”
Patent applicants have an obligation to reveal prior art to the Patent Office, she noted, but that obligation is no substitute for a thoroughsearch.
“The problem is, there are so many places to look for prior art,” she said. “The Patent Office is very limited in its resources and their ability to do these searches. Many times they don’t come across some relevant pieces of art.”
In his reported remarks, IBM’s Stallings also criticized companies that either seek patents for unoriginal work or hoard patents with no intention of implementing them. However, Miao asserted that there were disincentives for that kind of behavior in the existing patent system.
“To maintain patents is a very expensive process,” she said. “You have to pay all these patent maintenance fees in order to keep these patents alive.”
“These fees are ever increasing,” she added. “The older your patent, the more it costs to maintain it for its full term.”
“If a company has no interest in commercializing a patent or licensing it,” she continued, “then it would probably want to abandon it, by failing to pay the maintenance fee, or it can donate it and get a good tax writeoff.”
If I recall correctly, something like 50% of all the patents which have been contested have been declared invalid. That tells me, at least half the time (probably more, as people do not like admitting they were wrong, and organizations tend to dislike this even more) the patent office issues patents by mistake.
Given that context, this rebuttal read to me as something similar to, "IBM says we could do a good job if we had enough manpower, but they’re wrong! We couldn’t do a decent job if we had double enough manpower." Not exactly the sort of comment I’d want to make if I were running that show.