Patent Office Releases Rules To Let Third Parties Provide Documents To Help Reject Patent Applications

Patents

from the could-be-useful dept

One of the big problems with the patent system is that it’s not an adversarial process at all. You only have advocates for why a patent should be granted. No one is on the other side arguing why it shouldn’t be. The examiner is supposed to be neutral, but actually has some implicit incentives to find things more patentable than not. For example, patent examiners are often reviewed on their productivity in getting through patent applications. Considering the backlog of patents, this isn’t a surprise. But since there’s no such thing as a true “final rejection” of a patent, the inventor and their lawyers can keep coming back, asking the patent office to try again. But each time the examiner has to go back and review the same application all over again, that’s time away from a new application, and thus hurts his or her “productivity.”

Making matters worse, once a patent is granted, it has to be presumed valid under the law. Meaning that even though it has never actually been tested in an adversarial process, the courts simply assume it’s a valid patent. The fact that when patents do get re-examined, somewhere around three quarters of them have to be adjusted, with previously approved claims rejected, certainly calls into question just how “valid” those patents are. One of the small changes in the patent reform bill that past last year, the America Invents Act (AIA), was that it will now be slightly easier to file documents with the Patent Office for a patent application under consideration, rather than waiting until after the patent is granted.

This is definitely a step in the right direction, though, I do wonder how widely it will be used. Part of the problem is that it’s often not at all possible to tell what a patent actually impacts until after its granted and the holder sues or threatens to sue. And no one can watch every application to see if they might have some useful prior art or evidence of obviousness. Either way, the rules for such third party submissions go into effect September 16th, and the USPTO is releasing its official rules for how the process will work (pdf and embedded below). There is a fee involved — $180 — but it’s exempted for your first submission on a particular patent application if that submission is less than three documents. That may be a bit limiting, but it does suggest that individuals with clear prior art or proof of obviousness might at least be able to weigh in a bit to convince the examiner that an application is totally bogus.

Filed Under: obviousness, patents, prior art, third parties, uspto