Delays in Patent Reform a Detriment to SD Economy

By William E. Hunter

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Friday, Aug. 21, 2009 | Reading David Washburn's piece, Too Many Patents Pending, Not Enough Issued, in voiceofsandiego.org gives me a feeling something like déjà vu. Way back in 1922, we apparently had a similar problem (see Fish Demands Reform). The founder of my law firm, Frederick P. Fish, demanded reform back then, and Congress did finally take action to correct many of the patent system's problems. Unfortunately, many of the problems Mr. Fish pointed out then are back again today.

Mr. Fish noted that poor examination by the U.S. Patent Office leads to "expensive and protracted litigation, which is a serious hardship to the owner of the patent and to the public." This is the core problem of our patent system today. Congress has been trying to pass patent reform legislation for years now, but they apparently fail to realize that many of the problems of patent litigation are a direct result of poor examination by the Patent Office.

Moreover, as the Milwaukee Journal-Sentinel's series of stories aptly point out, the poor quality of examination by the Patent Office leads to increased costs for patent applicants, which has a significant negative impact on new ventures and new products. This negative impact on future innovation and investment will hurt San Diego County, in particular, since we are a hotbed of new ideas and new companies. Thankfully, San Diego's Darrell Issa has been a leader in moving forward with patent reform. Unfortunately, the U.S. Senate has once again decided to delay the patent reform process.

We, as a nation, really can't wait very much longer for patent reform. I work with examiners at the Patent Office on a regular basis, and it seems to me that a large source of the problems of delay and poor examination quality is clearly a result of low pay and unrealistic workload for examiners. In the long term, solving these problems will have a major impact in addressing the patent litigation issues we face and should thus be dealt with sooner, rather than later.

Back in 1922, Mr. Fish appears to have believed that a delay of one year before the first action by the Patent Office was unacceptable. Today, the Patent Office frequently takes more than two years, and sometimes even more than three years, before issuing a first action. This has to change if the United States is going to maintain its leading position in the innovation economy of the future. Innovation plays a larger role in our economy today than it did in 1922, so the problems with the Patent Office today are that much more significant than they were back then.

William E. Hunter is a Principal in the San Diego office of Fish & Richardson P.C. His e-mail address is hunter@fr.com.

3 Comments so far on this story...

So, full disclosure. Does your firm have any patent trolls as clients? Filed suit in that district in Texas? Do any of your clients have "business process" patents? Do you ever reject a client because the patent is obvious or has reams of prior art? Just asking.

Posted by rrrr | reply to this comment
August 21, 2009 12:21 pm

The present patent review system has been made obsolete by the practice of publishing patent applications. Previously, it was necessary to maximize secrecy by only having employees of the Patent Office review patents. Since patents applications are now public documents, the use of outside experts is warranted. The model for this already exists in the National Science Foundation grant review process. A simple means to expedite this would be to have the two parts of the Department of Commerce, the Patent Office and the NSF exchange some of their employees. The addition of some Patent Office employees to NSF should help NSF to maximize the value of US intellectual property, which will help the inventors, their institutions, US industry, provide jobs and increase our exports. Whereas the present situation discourages inventors and investors and provides our technology free to the rest of the World, which then exports it.

Posted by Robert C. Leif, Ph.D. | reply to this comment
August 22, 2009 2:57 pm

The improvements is simulation tools like Solid Works for Mechanical Engineers and PSpice for Electrical Engineers makes it possible to create complete looking inventions without a working prototype. This increases the number of inventions and especially variations of inventions that are difficult and time consuming to evaluate.

Posted by Donald Kimball | reply to this comment
August 23, 2009 7:51 am

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