defending the right to innovate
Monopoly corrupts. Absolute monopoly corrupts absolutely.
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In the last post we proposed claimless patenting as an alternative to today's system of allocation. Let's fill in some details of how this could be done.
Under this alternative system, a patent filing consists of a specification, which must contain at least a description of a working model implementation of the purported invention, clear enough so that any person of ordinary skill in the art can construct such a working model in a straightforward fashion. Rather than employ undefinable terms like "undue experimentation", straightforward will be defined below in terms of a Hamming distance, such that the worse the description is, the more likely the patent is to be found invalid.
Unlike today's system, which can't decide if an idea or a method is the patented object, in the claimless system it is the method that is owned, NOT the idea. The ideal specification is a working example (for code), or an actual set of instructions on how to make the supposed invention (for mechanical or electrical objects), or practice the supposedly inventive method. In the case of a software patent, since the working model is purely digital, there is no reason not to require that a working model - that is, actual code that runs - be provided as part of the specification, since there's no storage problem with digital information. Where a physical object, like an instrument, is envisioned, the specification should provide enough information to assemble the instrument. When a chemical is described, instructions for how to purchase or synthesize and verify the compound in question are appropriate. It is the instructions that provide the basis for distance measurement from the prior art.
So far, except for the requirement of a working codebase for a software specification, this isn't too different from existing practice. Now the fun part begins: the specification must also contain the applicant's representation of the closest example in the prior art, specifically including all published art and all commercial or freely-available products, to the purported inventive description above. The applicants must also provide a proposed measure of the distance between the prior art example and their purported invention. In general, such a measure would be like the Hamming distance in digital logic, in that it will count distinctions between the prior art and the purported invention.
What constitutes a distinction? This is where there will still be expertise involved in prosecuting a patent. An infinite variety of distinctions can be made between any two objects. The applicants choose the level of hierarchy at which distinctions will be counted. If they choose tiny steps to maximize the distance between themselves and the prior art, accused methods or devices will be able to use the same tiny steps to maximize distinctions between themselves and the invention, thus avoiding infringement. If the applicants choose to emphasize only huge distinctions, their distance measure will be small. A successful prosecution finds a level of hierarchy that maximizes the uniqueness of the applicant's object while still forcing competitors to achieve substantial distinctions or improvement to avoid infringement.
The patent examiner then reviews the specification under the following rubric: Using the Hamming distance measure proposed by the applicant, if the examiner finds an example in the prior art that is closer to the purported invention than that provided by the applicants, the application is prima facie invalid and rejected. The applicants may respond by accepting the examiner's example. The application may then be granted. This provides the first bound on the patented invention.
Note that we have actually abandoned any use of the concepts of "obviousness" and "invention": the application just describes something that is different from what has gone before. It is irrelevant how "hard" someone else thinks it might be to come up with the object or method described; all we do is count a distance and allocate a space around where they are.
The same Hamming distance measure can be used to establish enablement, again encouraging precise description and setting bounds on the patent's scope. If a person of ordinary skill is given the task of reducing the patent to practice, the Hamming distance between what they actually construct and what is provided in the patent sets another upper bound on allowable description. Since obviousness is no longer an issue, the persons doing the work can be employees of the applicant reducing the application to practice, which is just fine for practicing corporations wishing to block copying of their work -- but not so fine for non-practicing entities, who must at least find someone to build what they purport to own before they can litigate.
If the Hamming distance from the specification to the actual practice is larger than the distance from the prior art to the spec, the patent is invalid. If the Hamming distance from the spec to the reduced-to-practice example is larger than the distance to the purported infringer, there is no infringement.
This procedure has the advantage that the effect of a given patent will in general fall during the term, as practices change and the distance from the patented description to current practice increases. That is, we are making NO distinction between improvements supposedly derived from the purported invention and other improvements: as the art becomes more capable, the patent disclosure becomes less relevant. Only truly novel inventions, for which a large distance is maintained for a long time, will support infringement claims many years after grant. Trivial improvements on existing practice (which the vast majority of today's patents are) will quickly become irrelevant, as the potential infringements differ more and more from the described invention.
Finally, because the breadth of a patent is limited by the prior art rather than bizarre legal theories about what a word means, and can only grow narrower with the passing of time, the concern that a patent will block important activities and impair rather than encourage innovation is greatly reduced. This may enable legislators and judges to abandon pointless distinctions about what the appropriate subject matter for a patent is. However, the importance of prior art should be emphasized, and therefore any subject matter where the accessible prior art is lacking - that is, where the majority of information is inaccessible due to e.g. copyright or secrecy restrictions -- should be considered inappropriate for patenting.
Well, that was all very profound, or at least profound-sounding, but I'm still acting like a mathematician, proving statements about the properties of an object without actually producing it. In the next post we'll take a crack at defining a Hamming distance for a real-life application, to gain some insight into the possibilities and problems of measuring the size of an idea.
In the last few posts, we've looked at ways to change how patent are examined and litigated -- by having people who know the field review them, and by actually testing their conformance to the standards they are supposed to meet. Now we're going to get even more extreme, and look at changes in the fundamental way the ownership of knowledge is defined and imposed. This isn't unprecedented; the existing system of specifications and claims has been elaborated over the last two centuries, and through the history of patent monopolies, various disparate methods have been used to allocate and enforce them.
As we explained a few posts back, today's patents consist of a specification that is supposed to describe and enable the practice of a novel and useful method or apparatus, and a set of claims that is supposed to describe what the inventors own in return for their disclosure. The claims are supposed to be clearly described in the specification, and define the precise boundaries of what is owned, so that a person practicing the art can read the claims and avoid infringement if they so choose. But in practice, claims are interpreted by judges with no knowledge of a field, aided by attorneys with large incentives for distortion and experts paid to serve the interests of their clients. As we previously noted, even legal experts admit that no one knows what claims mean until litigation occurs. Naturally, the existing system is very useful for attorneys, since obscurity and confusion are the servants of litigation -- but it is harmful for everyone else. And that leaves aside the fundamental question of whether it is possible to construct unambiguous boundaries in the very-high-dimensional space of concepts and ideas.
So let's abandon this silly system and try something different. We proceed by starting from the purpose of the patent system as stated in the US constitution: to promote the progress of science and the useful arts. Progress is promoted by change and exploration. People learn by copying, but must make changes to progress. So let's make our basic principle: no exact copies. If I make something new, I can prevent you from just tearing apart my version and doing exactly the same thing. (And the newer my thing is, the more credit I ought to get.) But unlike the current system, I can not prevent you from improving upon my new object to make yours - that's progress, and we're supposed to promote it. So how do we tell the difference?
To accomplish this end I'm going to play a mathematician's trick: I'll assert the existence of something useful without having it in hand just yet. Let's imagine we have found a way of defining a distance between ideas. (In a future post we'll look at a possible approach to making such a measurement, but be warned this is the hard part, and care must be taken to avoid being back where we started, with terms that don't have a useful meaning.) If we have this handy tool, we can then make a patent system that actually works. Here's how:
• A patent applicant writes a specification that describes what they have built. But instead of appending claims, they cite the closest previous work they know of - the closest prior art - and then propose a measure of the distance between what they have done and what the prior art did. This distance is a number, not someone's obscure arguments about what is substantial and what is not.
• The examiner either agrees, or cites prior art that s/he believes is closer to the applicant's work, using the same distance measure. Once the applicant and the examiner agree, the patent is granted.
• The applicant then owns everything that is closer to their specification than the nearest prior art, with the following exception: To litigate, the applicant needs to show that they can actually implement their invention, and that the implementation is closer to their specification than the prior art was. If you have to move farther away from the disclosure than the disclosure was from the prior art to make the invention work, the invention was not enabled. The patent is declared invalid.
• Defendents in litigation can narrow the scope of the patent by finding prior art that was closer than what the applicant and examiner found. An accused method or device that is found to be farther from the specification than the specification was from the prior art is not infringing, even if it contains everything in the specification. I can't just copy your stuff, but I can improve it by more than you had improved what already existed. Progress is promoted, not discouraged.
The claimless approach to patenting fundamentally changes the incentives provided by the system. Instead of filing when you don't know how to do something, you need to file when you do to have your patent be found valid. Non-practicing entities are intrinsically excluded: if you can't make it you can't patent it. The more new stuff you disclose, the more you own. The impact of most patents will quickly fade as a field progresses; only really revolutionary disclosures, with huge distinctions from the prior art, will retain value for the full formal term of the patent.
Most importantly, the claimless patent system abandons the false proposition that ideas exist in a linear progression, and ownership ought to be assigned to the first one. Invention is a net, not a chain. We hold each other up; we should own the strands we weave and not the ones we don't.
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In the next posts we'll discuss a few details of implementation, and then take on the hard part of proposing a distance measure that can be at least reasonably unambiguous in the very complicated space of ideas. As my boss in the real world likes to say: go big or go home.
Joseph Jackson draws our attention to Project Marilyn a crowd funded effort to develop a promising anti-cancer drug unencumbered by patents. Check it out, and think about contributing. Often missing from our thinking is that the beneficiaries of a drug are not just those people that use it - but also all us who might use it.
In the previous posts we discussed the possibility of requiring applicants to prove that practitioners of the relevant art can, aided by the application, solve a problem that they could not solve without it. What are the challenges in implementing such an enterprise, and what do we get in return?
Naturally the first complaint will come from applicants: we will have to pay for building the object we want a monopoly on? That's expensive! It takes a long time! It might not work!
Having been on the other side - developing products that take a lot of money and a long time, and might not work - for the last few decades, I don't have a lot of sympathy for this position. As we noted previously, only about 10% of US applications these days are owned by individuals, the remainder being assigned to corporations or other organizations. Corporate filers who are filing to protect their product line have the resources to build what they patent. Corporate filers who don't are probably Non-Practicing Entities (trolls), and should be expunged from the system in any case. Individual filers who don't have the resources to practice the invention they claim to have conceived can't demonstrate that they've actually enabled anyone else to do so. In effect, they are now required to find a partner with sufficient resources - which they needed to do anyway to get anything out of their patent, unless their strategy was to sue people who have independently developed what they claim to own, a reprehensible position society need not support.
A more serious objection is raised when one asks how to actually proceed with a test. Many real products require access to specialized resources, in some cases not easily reproduced. For example, an application dealing with semiconductor processing (the techniques used to make an integrated circuit wafer) may require modifications to a process step. Semiconductor fabrication factories ("fabs") cost hundreds of millions of dollars to set up and more millions to run, and do not make modifications to their processes for one customer, as this can put other customer's products at risk. An applicant who is an employee of such a fab may have the ability to test enablement - but they already know what the invention is and can't test obviousness. And if the test is conducted in the applicant's facility, they can provide numerous resources for enablement that are not disclosed in the application and not available to skilled people elsewhere, allowing them to appear to pass the test while not disclosing important information. Similarly, an algorithm might require specialized code libraries that are not publicly available; a drug might need unique catalysts or analytical capabilities.
But the problem here is more apparent than real. The false assumption that everyone ought to be granted monopolies, in the absence of any demonstration that they are deserved, is the difficulty. The result of imposing an empirical test requirement in the above circumstances is that filings cannot be made for ideas whose practicality cannot be demonstrated without an applicant's specialized resources. In business terms, we have just defined the situation where competitive advantage is mainly obtained from internally-developed or acquired resources not readily available to competitors or the public. Rights to exclude are irrelevant to the business and thus not needed by society. Typically such resources become available with the passing of time (and the competitive advantage of early vertically-integrated players is eroded). Empirical testing becomes possible just when it becomes necessary.
A more fundamental challenge is to ensure that both obviousness and enablement tests are not contaminated by the applicants. Testing should ideally proceed using resources that are independent from those available in the applicant's organization, and with no personal contact between the applicants or their representatives and the people performing the test. Further, the folks performing the tests should be able to act independently of their client's perceived interest. In the iterated-prisoner's-dilemma world of real business, where people deal with each other repeatedly, a firm may be tempted to always be stupid about invention and brilliant about enablement. The only way to avoid this result is to allow both applicants and competitors to fund the tests, and forbid their identity to be revealed. In this case, the performing person or firm doesn't know which side they are working for, and thus has no incentive to taint the results.
Another subtle issue is that in the event that the test is performed when the relevant patent application has been published, how are the testers to be prevented from accessing the application or patent during the obviousness test, while still having access to other relevant art? It seems necessary to implement a search engine that excludes the patent or application under examination, and any continuations  thereof. That's not very hard. However, the persons performing the test must agree to avoid the use of general-purpose patent search engines, so they don't get the patent before they are supposed to. That's harder: now we're dealing with human nature rather than code. A successful implementation will require procedures that do not impede research but also don't give away the answer, and the procedures may work better in some areas of art than in others. It's also possible the procedures will be different for e.g. a drug for human consumption and an embedded software program.
Finally, even if the testing is conducted in an ethical and thoughtful fashion, the results may be unintelligible, not just to a lay jury and judge but even to experts in the field. Engineers generally don't write well. That's why you probably need the people involved to provide testimony, so that the mysterious parts have some hope of explanation. (Not that a deposition is the best environment to get clarity - but it's what we've got.)
We can conclude that considerable thought, and some experimentation, will be needed to produce a useful implementation of empirical testing. And that's in addition to the need for legislation and international agreements. I told you it would get harder, not easier, as we progressed.
The great benefit of empirical testing is the stripping out of crap. In the absence of reference to experiment, human activities become the proverbial counting-angels-on-the-head-of-a-pin silliness. That's what the modern patent system is. Testing exposes plausible but false assertions in a system whose assumptions are today never challenged. Instead of unending silly arguments about what is obvious and what isn't, we have a factual examination of whether a bunch of folks came up with the "invention" after ten minutes of brainstorming, or worked for six months and never thought of anything like it. Instead of trivializing the hard part of innovation - getting an idea to actually work - we see if the supposed revelations of the specification produce a working model or a catastrophe. Litigation will still be an exercise in rationalization, but at least judge and jury will have anchors in reality they can use to constrain the fantasies of the competing parties.
The requirement for testing will also greatly reduce the number of granted patents that are likely to be the subjects of litigation. Most patents will simply be abandoned as not worth testing. Many others will be found obvious in testing, or fail enablement, causing their owners to abandon the patent, or at least to avoid litigating with it.
A secondary if narrower benefit is an opportunity for useful employment for people in any field in which patents are sought. As an engineer, I am, of course, lobbying for my folks here, though if the regime of applicability of patents continues to increase, other groups benefit, too. Why should the system only employ attorneys and patent agents? An empirical test regime would create an opportunity for people and consulting firms to make a living while (hopefully) adding value for society.
Finally, in making public the results of development work funded by would-be monopolists, we do what the system is supposed to do but often doesn't: we show folks exactly how to practice the supposed invention, and thus ensure that an invention that is enabled actually adds to our knowledge of how to do useful things.
And that's only the second-most insanely audacious proposal. More next time.
1: A continuation is a patent application that uses the same specification as an earlier application, but has a different set of claims. A continuation-in-part adds new material to an earlier specification, and has additional claims.
In the previous post, we considered the proposal that every patent filing ought to be tested to see if it provides the two complementary benefits of being non-obvious and enabling. Let's see how such a requirement might work.
The idea is that every application to be examined shall be exposed to empirical testing to establish whether the supposed invention disclosed is actually novel, and whether the description is sufficient to enable it to be practiced. The empirical test uses the services of persons taken to be of ordinary skill in the relevant art. The number and type of persons selected may be chosen by the applicant, but it is a strict requirement that the same persons must participate in both the test of novelty and the test of enablement. (This prevents the use of persons of minimal skill and knowledge to examine novelty, and great expertise to demonstrate enablement.) The test may be performed during examination or after a patent is granted, but must precede any litigation involving a granted patent. (Note that the longer the applicant chooses to wait, the more risk there is that everyone will know about the supposed invention, generally by independent means rather than from the applicants. So it's actually to their advantage to do this early in the process.) The persons involved may be compensated by the applicant, but the compensation shall be arranged in advance, and provided at the completion of each stage as described below, without consideration of the contents of the reports in question. Participants should sign a statement declaring that they have no stake in the matter in question other than the agreed-upon compensation, and will diligently pursue both phases of the work with equal effort and attention.
In order to test novelty, the persons selected shall be presented with a statement of the problem to be solved and any constraints on the solution. It's not entirely trivial to figure out how to do this. Some patents have a nice background description and problem statement as part of the specification. Others jump right into their supposed invention, without even clearly saying what problem it is supposed to solve. A first cut is to have the relevant patent examiner provide a problem statement, based on the examiner's understanding of the specification, within a reasonable time after a request from the applicant. It may simply be extracted from the specification, if in the examiner's judgment the specification contains a clear problem statement that does not include the inventive method or apparatus. But in cases where that doesn't work, the examiner can use her or his own judgment about how to frame the problem without describing the applicants' solution.
In addition to the problem statement, the persons selected should be provided with any background discussion in the specification that describes relevant prior art, any prior art cited by the applicants or the examiner, and access to any other relevant art they require. Note that the access to art should NOT be constrained by the date of filing of the application, again in order to encourage the applicants to pursue an empirical test at the earliest possible date, since published art after the date of application may anticipate the described invention.
The test personnel shall be provided with whatever time and resources the applicant believes are needed to pursue a solution to the problem posed, with the proviso that whatever time and resources are provided for the examination of enablement must also be provided for the examination of novelty, and vice versa. This prevents the applicant from giving the team (say) 1 hour to find solutions to the problem, equipped with a slide rule and a notebook, and six months and millions of dollars of equipment to implement the described invention.
Once the specified initial phase is completed, the persons involved shall record their proposed and/or demonstrated solutions to the problem in question. They shall then be provided with the full patent specification, but NO other additional resources. Their responsibility is to practice the described invention, aided by the specification, and the same prior art and resources provided to solve the problem in the absence of the disclosure of the purported invention in the spec. The same people, the same calendar and labor time, and the same resources, shall be made available as for the initial examination of novelty.
A participant in the first stage may become unavailable for the second stage (due to personal reasons, business necessity, accident, etc.) but they shall not be replaced with any other person, though any notes, documents, or other work product they produced in the first stage may be used by the other participants in the second stage. A final report shall detail the extent to which the participants were able to practice the invention described in the specification. Any work product -- that is, any code they wrote, anything they built or modified, any other physical results of the project -- should also be preserved and available as evidence in the case of subsequent litigation.
The result of both stages shall be made available to the relevant examiner (if the patent application is still in prosecution at the completion of this exercise), and become part of the file wrapper in any case. The results of both stages must be completed before any litigation can be initiated based on a granted patent, and must be entered as evidence in any such litigation, and made available unedited to the jury in such litigation. The work product should be available for examination by representatives of the two sides in any litigation. The persons performing the two tests shall be obligated to provide (at least) deposition testimony, if requested by either party, for which they shall be compensated in at least the same fashion as for the work performed in the project, the cost of such compensation to be disclosed to the court and equally divided between the plaintiff and defendant.
In the next post we'll look at the various benefits and challenges of implementing this non-trivial change in the way patents are examined. But meanwhile I have to go see how the Giants are doing...
Non-obviousness and enablement are the two complementary aspects of the idea that a patent has social value: without the patent a person of ordinary skill cannot practice an invention, but with the patent they can. But how do we know if and when this is true?
The answer is rather disheartening. Non-obviousness is tested by how an examiner feels about claims. We noted in the previous post that this is a strange and short-sighted way to think about an invention, but what's worse is that the when real world provides us a falsification of the examiner's decision, it is treated as a crime. When a patent has been granted, and then another person discovers and practices the claimed invention, they can be sued for infringement, even if they can demonstrate that they had no knowledge of the patent and no other means of deriving their result from its inventors. Upon first glance this is a rather bizarre result, since the fact that another person has discovered the invention unaided means that the first part of the patent compact has been shown to be inapplicable: the patent was not needed to practice the invention. The invention was obvious, the examiner got it wrong, and the patent is invalid. But that's not the way the law works. So not only do we not test the belief in non-obviousness during examination, we willfully ignore subsequent evidence that the examination was incorrect. 
Enablement is worse. It plays no role in examination and usually also in litigation. The America Invents act has even abandoned the requirement that the best mode of practice known to the inventor be disclosed, since lack of such disclosure no longer has any effect on validity. This is a puzzling result for an engineer (like me) who actually makes things, because we know from long and painful experience that there are lots of good ideas but very few that actually work the way you think they will. Attorneys and judges basically assume that everything is ok when enough text has been recorded, even if the text is gibberish. This is because they never have to ship product.
There's no reason for this situation, other than the legal profession's aversion to empirical data. For a brief period in the 19th century, inventors were required to provide a working model with their application. The practice was terminated because the patent office ran out of room for all the stuff, not because it was a bad idea. A patent applicant is asking for a monopoly. We don't have to give it to them. The burden should be on them to PROVE by empirical testing that they have satisfied the two complementary requirements for receiving their right to exclude.
This isn't that hard to envision. The European Patent Office presents the following standard for judging inventiveness:
"Is there any teaching in the prior art, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?"
So all we have to do is validate the "would, not could" standard by getting some folks together, giving them the problem, and seeing what they do in fact come up with -- and then handing them the patent and seeing if it makes a difference. In the next post we'll present some more details about how to do this, why we ought to, and where to use the resulting knowledge.
NOTES 1: A "prior rights" defense is now allowed in the US when the invention in question has been in use by the accused infringer prior to the filing of the accusing patent. The user retains the right to use the invention, but the patent is still not invalidated, even though it was shown to be so obvious that someone invented it before the person who filed.
Oooops, conceptual typo.
Aaaack, blew it again.
Third time's the charm:
There. Dull but relevant.
Peer review is the process of grabbing people who are familiar with a field to look at a paper or book before it gets published. It has been used in various forms for a long time in the sciences; Wikipedia provides a nifty history of the process. While 19th-century reviewers were often journal editors or staff, in the twentieth century reviewers were generally folks who had themselves published papers related to the one under consideration, the reviewers being recruited by journal editors. In the modern crowd-sourced world, journals are experimenting with open reviews, in which an article is published and then reviewed by whoever is interested, with the reviewers' comments becoming part of the publication.
A limited form of peer review, known as the Peer-to-Patent project, has already been tried by the US Patent Office. A first version ran in 2008, and a revised project ran from October 2010 to September 2011. Both were administered in cooperation with the New York Law School, and were limited to certain areas of art, including software-related patents, and later biotechnology, and speech recognition. Patents submitted to the program got earlier review as a reward. Smaller related projects have also been run in Australia and Japan. Most importantly, the reviewers were limited to submitting prior art they thought was related to the patent, and optionally annotating the art to help an examiner.
NYLS published a couple of anniversary reports (Peer to Patent home page). The program was also evaluated in some detail by students James Loiselle, Michael Lynch, and Michael Sherrerd at Worcester Polytechnic Institute ("Evaluation of the Peer to Patent Pilot Program"). While various administrative problems were encountered, even this limited program clearly contributed to the ability of examiners to access relevant prior art. At the very least, Peer-to-Patent ought to be revived and extended to all areas of art.
However, the process as it has so far been tried treats the public as servants assisting examiners but exercising no judgment. Peer review in the sciences may leave the final decision to an editor, but encourages reviewers to be full participants in the intellectual endeavor of evaluating the submitted work. As we described in the previous post, it is the focus on comparing claims to one or two prior publications, rather than actually reading and comprehending the specification, that gives rise to many of the absurd results we see from the patent system. In order to make peer review contribute fully to the patent process, we need to realize that people skilled in the relevant art are not just a theoretical legal construct but a reality, and ensure that they contribute (hopefully thoughtfully) to the process of examination. We therefore propose the following elaborated peer review process.
Every patent application should be subject to obligatory peer review to supplement the existing examination. The pool of reviewers may be administered by the USPTO, or administered by professional organizations relevant to specific arts (such as the IEEE for electrical and computer engineering) as representatives of the USPTO. To ensure an adequate pool of qualified reviewers, the USPTO should require that a person cannot file a patent application unless they have also registered to act as a reviewer. (This particular provision, at least, is likely to require legislation. I never said reform was easy.) An alternative, more stringent condition, would be that any would-be applicant must have performed at least (for example) three reviews of other people's applications in the previous year. The status of international applicants may be arranged through suitable agreements, such that they can fulfill the same duties as US citizens, while subject to the laws of their country of residence.
The reviewer should be bound to examine the specification and provide their best objective evaluation of:
• NOVELTY: whether a novel invention is described;
• ENABLEMENT: whether the invention is described in sufficient detail to allow them (or anyone else of ordinary skill) to practice the invention without undue experimentation;
• UTILITY: whether the described invention is useful to practitioners of the relevant art.
Reviewers may optionally express an opinion regarding claims submitted in the application. The examination process, as we have noted, already puts way too much emphasis on partitioning ownership; there's no need to add more.
It is an interesting question how reviewers for a specific application should be selected, since a reviewer ought to be conversant in the field of interest for the application. Since would-be applicants would be required to register as reviewers, it is possible to also require that they state the fields in which they are knowledgeable, and then have applications recommended by an examiner. The examiner may also look at past filings, or technical publications, by a reviewer to see what areas they work in. These approaches are analogous to peer reviewers selected by journal editors based on past publications. Self-selection is an alternative in the modern internet-based world, but might be usefully accompanied by a brief statement of why a reviewer is qualified to review a specific application, or perhaps a resumé.
Reviewers may cite prior art that they believe to be relevant, just as in the Peer-to-Patent program. As noted in the program evaluation, it is also important that they annotate the cited art to clarify what the examiner might want to look at.
Each review becomes a part of the file wrapper for the application. (That's the official record of the prosecution of a specific patent, and becomes publicly available after publication.) There is no requirement that an examiner take the reviews into account, except that s/he should look at any additional cited art. However, in the event of litigation related to a granted patent from the application, the unedited reviews must be entered as evidence and made available to the jury. Reviewers may be called but shall not be obligated to testify, except to provide an affadavit ensuring that the cited reviews were in fact produced by them.
Note the fact that an applicant MUST be a reviewer addresses the issue of ensuring that patents are indeed reviewed, a concern in the earlier projects. The requirement of review as a precondition for filing also addresses any reticence an employer might have in allowing an employee to review; if they want to file, they have to allow their employees to review.
Disclosure of a patented invention is the price of monopoly. The strange idea that an application should be secret should never have arisen and should be abandoned in any case; it should not be an obstacle to review. Review by people who know what they are reading will help ensure that the invention is actually comprehensively and comprehensibly disclosed. It will help reduce the tendency of applicants to intentionally file before they know how to enable an invention, thus avoiding effective disclosure while securing monopoly rights.
The question of anonymity of reviewers, and of applicants, is a continual challenge and a subject of experimentation in the sciences; there is no reason we should expect the best answer to be immediately apparent for a patent review system. However, in the case of patents, I suggest that there are strong arguments for disclosure and attendant responsibilities. In order to qualify to hold monopolies, a would-be applicant must review. In order to ensure that he or she does so responsibly, they should NOT be anonymous. Disclosure also makes it possible to review qualifications and expose conflicts of interest that might taint their review.
I have proposed that reviewers are not exposed to testimony in litigation, except to confirm that the review in question was in fact produced by them and has not been tampered with, but a good case could be made that reviewers should provide testimony in litigation (presumably being compensated in doing so just as any hired experts are). I can assure the readers, from personal experience, that testifying in civil litigation sucks, at least for people with ethical standards. If this makes people reluctant to review patents, it will then reduce the number of people who can file, which -- if patents are unhelpful to the overall economy, as we previously showed -- could be a good thing.
BENEFITS AND CHALLENGES:
The great benefit of requiring a record of critical reviews is that, when litigation occurs, a possibly objective examination of the virtues of the patent or patents in use will exist -- something that doesn't happen otherwise. Incomprehensible specifications, specs that don't describe anything useful, or merely contain all the things that any skilled person would try, will be described as such by someone who (we hope) doesn't have a direct interest in the litigation. Ideas that are actually new and important will also get the benefit of such characterization. Peer review, properly conducted, will help create a background understanding of whether something new and useful was usefully disclosed, against which the arguments about what is owned and what is not can take place.
The program as proposed will create a professional obligation for people who wish to be able to file patent applications. There's nothing bad about tying privileges to obligations. If it is administered by professional societies, those societies will benefit, and thus become supporters of the program. If it administered by the USPTO, it will need to be funded, always a challenge.
Naturally, as with any system, people will try to cheat and manipulate the results. Peer review in the sciences has encountered many challenges and has experienced some spectacular failures. We can't expect this to be any easier.
While some of what is outlined above can be accomplished by the USPTO (or equivalent organizations) on their own authority, requirements limiting the ability to file will certainly require legislation, obviously a major challenge in the modern world. International filers will also need to be treated fairly, requiring revisions to existing international agreements, again time-consuming and laborious.
And that's the easy proposal. But if you don't start, you can't finish. More to come.
I've been working on and off on patents for about twenty years, though I am neither an attorney nor a patent agent. When I make one of my colleagues review a patent (which is for most of them the only time they read patents), a very common reaction is "How the heck did they get that?" OK, the word used is often more profane than ‘heck' - but the sentiment is the same: "Everyone who works in the field knows ‘x'; why was a patent granted on it?"
This anecdotal evidence is supported by recent more-thorough examinations, some described by Matt Levy of Patent Progress. Michael Risch of Villanova recently published a study showing that of 105 patents whose validity was examined in litigation, 44 were completely invalidated, and only 32 were found to have all valid claims (A Generation of Patent Litigation..", page 38) . Dennis Crouch of the University of Missouri has estimated the allowance rate for applications (when "Requests for Continuing Examination" are included) as about 70% (USPTO Breaks New Ground...) - that is, pretty much everybody who applies gets a patent, though sometimes it takes a while.
Are we to conclude, as Mr. Aharonian of the Internet Patent News email service often seems to advocate, that patent examiners are idiots and the USPTO is run by slimeballs? While the unfortunate limitations of human nature may play a role in the failings of the patent system, in this post we will suggest that the nature of patent prosecution inevitably leads to the often-silly and sometimes harmful results we observe. This brief discussion will then serve as motivation for the changes in the system we will examine in subsequent missives.
A patent consists of an abstract, a specification, drawings, and claims. But when a patent is examined, it is often the case that only the claims play a significant role. (An attorney colleague of mine believes that most examiners don't read anything but the claims, and the specification might as well be skipped.) This is curious, because, as noted by Professor Feldman of UC Berkeley in Rethinking Patent Law*, no one knows what the claims of a patent actually mean until it is litigated.
The claims are supposed to clearly describe what the applicant "claims" to have invented and therefore owns. Claims are usually fairly brief - a quarter of a page or less, often much less - and have a few "elements" which are supposed to describe an invention. An examiner responds to an application by citing one or more pieces of "prior art" (stuff that was published before the application was filed) that he or she alleges contain the purported inventive elements. It is often the case that only one bit of prior art is used; it is rare for more than four or five references to be cited. The applicant then argues that the prior art is not, in fact, relevant, and may also amend the language used in the claims to narrow their scope - although, as noted above, it's never clear what the practical effect is until you're in court.
The cited prior art essentially consists only of patents and patent applications, unless the applicant has provided publications from other sources. Sometimes the cited prior art just flat out has what the applicant thought of. One would think this should result in immediate abandonment of the application - but in fact, many applicants simply find a way to narrow the claims until something gets granted. Sometimes the cited prior art is so bizarrely irrelevant (at least to a person knowledgeable in the field) that one can only assume it is the product of a keyword search with no intelligence applied. But in general we can treat the cited prior art as roughly being taken at random from generally related earlier patents, in the sense that most topics have hundreds or thousands of applications and granted patents, and no one would have the ability or time to read and absorb a substantial fraction of them. And that leaves out all the technical literature and commercial product information that ought to be included but just isn't.
We can thus consider what happens if you randomly sample a complex object. If you actually design something, your code, or chip, or medical device, is unique. It always has a slightly different set of tradeoffs, guesses, wants, and compromises from other examples of similar stuff. So in the sense of not being identical to any single publication or object, every application is inventive, and that's what we see: most applications become granted patents. The applicant can always find a way to claim their stuff that's not quite the same as whatever art was cited against them. This might be ok if the system we used was primarily oriented to preventing exact copies of the patented object, but that's not how our existing system works. (In a future post we will examine some thoughts on how to usefully move towards such an approach to defining what is excluded by a patent right.)
What does not happen is what a practitioner in the field does with a technical publication: read the specification to figure out what the application thinks it has that is new, and then reflect upon the art to figure out if it is, independently of what the applicant thinks they'd like to own. The way the world should be is: If there is no invention in the specification, there can't be an invention in the claims. But that's not how the world actually works.
In summary, patent examination is mainly an exercise in the wordsmithing of claims, not a reflection on the novelty, clarity, and utility (or lack thereof) of a purported invention. It is this fact that explains why the results are often silly and sometimes absurd.
People are people and don't readily modify their behavior, at least once they get old enough to hold a job. What can we do to modify the system to make it work better with the people we have? In the next few posts I'll propose a number of approaches, some old, some perhaps new, to accomplish this end.
*Full disclosure: Professor Feldman's book, as I've noted in a review on Amazon, isn't really very good, at least for anyone who is not a law professor. But she does seem to know the legal side of the system quite well, so I am accepting her view on the issue of claims interpretation.
In the previous post, we saw that the dramatic increase in patent awards since about 1980 has not been accompanied by any consequent change in overall economic growth in the United States. But before we conclude that patents don't do anything at all (except employ examiners and attorneys), let's look a bit farther afield.
For convenience, we repeat below the diagram shown in the previous post, of annual patent grants for the last half-century plotted on a logarithmic scale.
In the next graph, using data from Thomas Piketty's remarkable work Capital in the 21st Century, we plot the percentage of US national income collected by the top 1% of earners for about the same time period:
We can immediately see that, just like the number of patent grants, the share of income going to the top centile was about constant (or perhaps falling a bit) in the period 1960 to 1980, and then some time between 1980 and 1983 started going up dramatically. While there's a lot of scatter, we can make a plausible approximation that the share grows at about 2.6%/year from 1980 to 2010. This isn't exactly the same as the rate of growth of patent grants, but it isn't that different. Certainly the qualitative behavior of the two datasets is extremely similar. It's not easy to say if one is delayed with respect to the other, so the relationship might be causal, or it might be that both are the result of a single common cause. (Or, of course, the correlation could be accidental.) But in any case, this dataset looks a lot more like something related to patenting than the US GDP did.
Now, folks who have studied these issues (such as Prof. Piketty) would point at changes in tax law and corporate culture long before looking at intellectual property issues, when searching for the reasons behind the increase in wealth concentration in recent decades. And quantitatively they are probably correct. If we value each patent granted at $50,000, then the total value of a year's patenting is around twelve billion dollars. Even if that's pessimistic by a factor of 3 or 4, it's still a rather tiny fraction of the US GDP of around fifteen trillion dollars today. It seems reasonable that we should regard the close resemblance of our two graphs as showing that the behavior of both datasets is driven by a common cause, which we might characterize as the increasing influence of established wealth in governmental policy over the last 3 decades.
Nevertheless, we will suggest by the following argument that the result we see is consistent with a sensible understanding of what granting lots of patents might be expected to produce. A patent is a right to exclude: it gives the holder the legal right to prevent other people or organizations from doing something that, absent the patent, they have the ability and resources to accomplish. (You can't sue someone for infringement unless they are able to infringe.) About 90% of granted patents are owned by corporations, in the majority of cases due to compulsory assignment as a condition of employment. This percentage, incidentally, was only 71% in 1991.
The possession of these rights would be expected to have two consequences. The first is that the relative value of an employee relative to an employer is reduced: the employer now owns something the employee knows how to do. The employee can make improvements on an invention, possibly for a different employer, and patent same - but if the practice is still covered by the first grant, the initial employer can exclude the inventor from their own invention.
The second consequence is that established firms can raise barriers to entry by owning large numbers of patents. Barriers to entry increase profitability by reducing the number of competitors in a space without the need for product improvements. As noted, for example, by Boldrin and Levine in Against Intellectual Monopoly, patenting tends to increase as industries mature. Exclusion of competitors without corresponding improvements in products or services represents a net transfer of wealth to corporate management and investors over consumers. If patents were granted only for substantial improvements in products or services, and thus their disclosure represented a public good, it is possible that this transfer might be mitigated by the benefit to the public. However, US patents are in fact granted more or less at random, with little distinction between meaningless and profound disclosures. (We will discuss this assertion in more detail in the next post; a similar point is made in a recent post from the folks at Patent Progress: Why We Need Better Patent Quality.) It is unlikely that the resulting public benefit would outweigh the cost of granted rights to exclude.
And, of course, the third consequence of granting rights to exclude is the rise of non-practicing entities, patent "trolls", whose activities involve no products at all, but simply the threat of exclusion of other parties as a means of extorting payment.
Thus, it is plausible, though hardly proven, that the increase in US patenting has played a role in the roughly contemporaneous increase in the concentration of wealth in the United States. Research work in the islands of the Aegean sea over 2300 years ago, reported in Will Durant's The Life of Greece , showed that a substantial middle class is required for the success of a democratic system of government. While many other changes in policy are needed to moderate and perhaps reverse the progress of the United States towards a plutocracy, improvements in the means of granting patent monopolies can play a role. Suggestions for such improvements - some modest, some wildly ambitious - will constitute the topics of the remainder of this series of posts.
USPTO; Capital in the 21st Century, T. Piketty (trans. A. Goldhammer), figure 8.6; http://www.nsf.gov/statistics/seind93/chap6/doc/6e1a93.htm; http://www.nytimes.com/2014/04/14/opinion/my-ideas-my-bosss-property.html;
Notes: 1: OK, I'm doing this one from memory; my copy is buried in the garage, don't ask. If someone has a digitized version of the book and can provide the specific citation (and any corrections to my instant characterization) I'd appreciate the help.
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