Against Monopoly

defending the right to innovate

Monopoly corrupts. Absolute monopoly corrupts absolutely.

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Testing 1-2-3

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...


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