Psst! Patent Examiners Do Not Scale

from the repeat-after-me dept

It’s a refrain we’ve been repeating year after year: patent examiners don’t scale. While some patent system supporters continue to insist the only problem with the patent system is not enough examiners, that’s simply incorrect. Thanks to the way the patent system has changed over the years, combined with the ever-increasing rate of technological change and advancement, the number of patent applications are only going to increase at a rather rapid rate — far exceeding any attempt to hire out of the backlog. The Government Accountability Office has basically said as much, admitting that even if the USPTO could hire 1,200 new examiners each year over the next five years, the patent backlog would continue to increase.

The answer is clearly not to focus on hiring more patent examiners. The way the system is currently designed, this is not a problem you solve by hiring more people. You only solve this problem by reducing the number of patent applications. And, the only way to do that is to completely revamp the patent system itself. Don’t think the current attempt at patent reform is the answer, either. While there are some good things in there, the proposal to switch from a “first to invent” system to a “first to file” system will make this problem worse. By using a “first to file” system, the incentive is to file as quickly as possible for any idea possible, to make sure you beat anyone else. A first to invent system at least gives the person some leeway to make sure that it’s worth filing.

In the meantime, let’s repeat it once more: patent examiners don’t scale. If you design the patent system to expand at a rapid rate (which, thanks to the USPTO, the courts and Congress, we have…), then it’s only natural that it will scale well beyond the reach of a system that requires humans to analyze each and every patent. The end result is that a lot of bad applications get approved, which only increases the problem, since more people try to patent bad concepts, knowing that they have a decent chance of getting it through the system.

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Comments on “Psst! Patent Examiners Do Not Scale”

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Anthony says:

what, specifically, would you propose that would fairly and effectively reduce the number of patents filed?

i agree with your identification of the problem, but i think we’d disagree on the solution. I would propose the following:
a) phase out business methods patents – not only are they arguably (probably) non-patentable subject matter, Class G06Q is the most backed up realm in the USPTO
b) limit continuation practice. This is being proposed as part of the patent reform bill. I think this will be highly effective, and i’m surprised you didn’t mention it. Continuations are probably the most taxing on examiners.
c) increase renewal fees and continuation fees, but not initial fees. I think this will have a minimally invasive effect on the “little guy” while chilling the urge to monopolize and refile.
d) increase the quality of life for patent examiners (instead of hiring more drones). There’s no reason why the people deciding the fate of your patent should make less money than the attorney you pay to write it. Doing this would attract more talent to the USPTO and create a better, more productive work environment.
e) require a prior art search to accompany all applications. This will force attorneys to acknowledge existence of prior art, make the examiners’ lives easier, and might have a chilling effect on overall patent filing.

I agree that “first to invent” is superior to “first to file.”

Anonymous Coward says:

Re: Re:

I would impose a severe fine for patents with claims that are found to be bogus due to prior art. This is a bit disturbing from the hypothetical-little-guy-in-his-basement chilling effect point of view–but then again, he is making quite a serious claim when he patents something, which can have serious repercussions on the economy, and so he needs to put some collateral at stake in case he is making a big mistake and costing everyone.

fayette C (user link) says:

I can be the first to patent these then?

The Transporter, If the Star Trek one is taken then Mine is different cause it works based on sound waves that can travel through space. To some this sounds easy though some may think that is impossible with the lack of air or other medium in space, But I trust I can invent Speacial Sound waves see next.

Speacial Sound Wave Transmitters, This will be a transmiter that can take soundwaves and convert them into drark energy sound waves that can travel through space at the speed of Special Sound.

Cylons, I’m sure they are have been forgotten I just have to patent them first right? Besides My argument will be since the are coded with Visual Studio they won’t start a Xenocide on humans. (MS is that good)

Unobtainium, and not that cheep knock-off stuff in the core, but the real thing.

4-80-sicks says:

utility is important

How about “first to have physical market-ready prototype”? Along with Anthony’s suggestions, I think that would help deter frivolous filings:
-No more patents for nebulous ideas that don’t go anywhere and are be used to sue somebody who implements the idea in a real product
-No patents for web crap. New technology (such as Ajax, VRML, etc.) that can be used to build a site should be a platform anybody can use freely. If it’s not, it is less useful to the potential filer and everybody else. This extends to other platform technologies as well (Blu-ray, wireless power, etc.)

CHL Instructor (user link) says:

If I were king...

First change I’d make to the patent system would be to cancel all business process and software patents. The remainder would be for a maximum of 7 years with no renewal.

Then, for intellectual property covered under copyright, I would institute an IP tax. You could keep your ‘copyright’ as long as you valued it enough to pay the tax.

cowardly lion says:

Re: If I were king...

interesting parallel, copyrights are registered not examined (50 bucks?) and no maintenance fees are required, period. a patent maintence fee over the life of the patent is over 15K in real present dollars. plus there are pesky statutory damages of the kind the riaa and mpaa usually assess in pursuing infringement. they last 75 years? you wanna protect mickey mouse but not inventors, interesting.

i prefer to protect entrepreneur and inventors and let the lawyers do what they do in every business, re-allocate the wealth

the patent office is funded by applicants not the public. in fact, through fee diversion the congress has been spending applicant surplus funds since 1999. turnover of examiners is high and institutional knowledge has suffered. so scale of an examiner is half of the problem, making the pto the best determinant of what is patentable is simply lost and quality declines.

but the pto is the only agency of the us government that makes money (a kind of inefficiency, actually, as applicants, the tax payers, suffer from pendency and a clicking clock). litigation over patents does not involve the pto, it is between private parties. the pto gets involved only in re-exams and no examiner or the office itself is accountable for the prosecution of the patent (getting it successfully issued).

the enormous pay-outs are mostly a result of the oligopolistic nature and size of the defendants. big companies dominating big segments of the business[es]

by incentivizing public publication of invention, the public benefits as this is not a “copyright” but the right to exclude a party from practicing what the claims are interpreted (by judge, jury, lawyers, etc.).

7 years? many patents have been pending that long and the maximum limit for a patent and any continuation is 20 years

copyright meanwhile is being protected more and patents are under attack by the very same folks who have the most patent filings and benefit the most from the system, interesting dynamic.

when you’re ahead, freeze the game in your favor and outsource the jobs and lengthen litigation to outlast.

Andrew D. Todd (user link) says:

Why Not Virtual Working Models?

Re: #8, utility is important by Chronno S. Trigger on Feb 29th, 2008 @ 1:43pm

Better still, require computer models or simulations, as a (partial) fulfilment of the working model requirement, and require these to be incorporated in the text of the patent. Even binaries can be printed in “4-bytes-for-3-bytes” notation (eg. UUEncode, MIME encoding, etc). At this stage, we have software systems, such as CAD/CAM, which model virtually all areas of technology. A CAD/CAM file is effectively a kind of computer program. Such a requirement would not be a significant burden to the legitimate inventor, since he would be creating such files anyway. The nature of a programming language would force the patent applicant to state exactly what he meant, otherwise the program would not compile. Additionally, it would force him to use the same kind of language customarily used for prior art. In the case of personal computer software, that is generally the C programming language. One could probably construct a search engine which would go looking for syntactic similarities in open-source codebases. Because the working model was published, it would be comparatively easy for third parties, free of the patent office’s atmosphere of corruption, to construct search queries which would locate similarities.

The physical model requirement should be reserved for purported inventions which claim to challenge generally accepted physical laws, eg. perpetual motion machines, faster-than-light starships, etc.

There are of course details to be worked out, such as what file formats or programming languages would be acceptable.

Moshe says:

the headline is STUPID

Patent examiners do not scale – what a STUPID conclusion.

Two OBVIOUS things that have not been tried:

a) satellite offices – no need for all patent examiners to be in one complex in one of the most expensive regions of the United States – of COURSE you are not going to get many good examiners to work for $60 K in WASHINGTON DC area.
b) make an effort to hire older engineers – these guys are discriminated against by age discrimination, and of course they often know the best prior art anyhow.

Mike (profile) says:

Re: the headline is STUPID

Patent examiners do not scale – what a STUPID conclusion.

I like how you call it stupid, but fail to actually say why it’s wrong. Very convincing.

As for your suggestions, you are wrong. The USPTO has one of the more aggressive telecommuting efforts.

Either way, even if you could hire people around the country and hire retired engineers, you couldn’t scale the system fast enough to deal with the inflow of patent apps. Just look at the numbers.

cowardly lion says:

why not limit blogs like these as well ...

you think technology moves so fast, why worry about patents at all?

the economy is intangible and patents are the manner best suited to protect the labors of the mind

this requirement for hardware or physical embodiments is simply ridiculous, software = hardware and all of those open source folk have, of course, sold out. anyone need a prototype simply load that software into a turing machine (a PC to those new to information theory) and wallah, embodiment

read the patent reform act, it does not address business method patents or software patents (imagine that? as the supporters are mostly IT companies)

society must move forward and software is where the money is

anyone have problems with VCs or hedge funds? what exactly is the issue with inventors?

and, btw, perpetual motion machines are SPECIFICALLY non-statutory subject matter — it is NOT possible to get a patent

europe on the other hand has agreed to the patentability of software (you all need to define your issues consistent with the pure politics at work)

Pete says:

One claim per application

You want to speed up the examination of applications? The answer is obvious; limit the number of claims in each application to a single one. Examiners get bogged down with 100 claim applications that require large amounts of time to analyze, search, and reject. By limiting each application to the broadest claim which applicant believes to be patentable the backlog will decline faster than it will with any other conceivable solution.

Evil Mike (profile) says:

Crowd-Source Patent Controls...

What about putting the efforts of the internet populace to good use?

Not unlike the Google Image Labeler… just needing to be a little more involved…

Primarily, using “qualified” (define it later…) people and a website, requiring authentication, to help in locating prior art or prior patents.

You could always have the results double-checked thru patent examiners, and they’d have some real leads to go off of, rather than working blindly…

One might even have a stipend for those registered users whose productivity is particularly useful.

Of course, the website (and the mechanics behind the site) would have to be amazingly comprehensive.

Amnon Mike Cohen says:

Pre-Patent method, is the best practical way

Patents are useless unless you can profit from the invention as it is in the registered Intellectual Property art, so first you need commercial protection, capital in place for the business strategy plan, and when you have a market ready commercial project, you can then apply for the patent which is always is legally possible by the language you employ, if you did not also file as first to invent and first to file and first not to publish option like I have done – while the pre-patent commercialization method I employ, which is another of my inventions, and you can also by pass or infringe on your original or create a new application, if your invention is original and actual is a new art or innovation, but is not only an idea on or a copy of existing patent.
As to farther protection, on national or international patents, and how to protect the patenting rights while developing the commercial-project or profitable-venture, you will need to contact me directly for the more confidential and trade secrets of the yet new method and its registry plus trading-post facilitation under the existing limitations of the patent method and its USPTO plus examiners limitations and wrongdoing.

ohwilleke (user link) says:

Why not?

I don’t necessarily have a strong opinion on why patent examiners do or do not scale. But, neither this post, nor the posts back linked, suggest why this is the case, only that empirical evidence suggest that it may be true.

But, if one is going to find a solution (and peer reviewed patents are simply another name for believing that it is possible to hire more patent examiners who are willing to work for free, itself a questionable assumption outside the world of academia where everyone is on salary to start with anyway), one has to know why scaling doesn’t work.

This said, one of the easier ways you could solve the problem would be to emulate the system for copyright or real estate. Rather than determining the merits of a patent application in advance, one would simply file an application to provide definitive proof of time of application. Presumptions of validity would be eliminated and the merits would be decided only in litigated cases.

Instead of relying on patent examiners, big companies with potentially very valueable patents upon which they needed to reply would turn to opinion letters from private patent lawyers, in much the same way that commercial real estate companies rely upon title insurance companies, and oil and gas firms obtain elaborate title opinions from oil and gas lawyers before drilling.

Little guy inventors could file and hope, paying only to have an application drawn up, and not invest the money in the prior art/obviousness due diligence until an investor approached the little guy inventor and financed the relevant validity opinion.

Private lawyers exposing themselves to liability in a validity opinion would likely be more cautious about doing so than patent officers who have immunity from liability if the overlook prior art or obviousness or some other flaw, giving them an incentive to rubber stamp applications if they are overburdened.

Indeed, if one wanted something close to the current system, one could allow the presumptions of an existing PTO screened patent to apply in cases where a bonded and insured patent bar member has filed a validity opinion upon which that bar member is exposed to liability.

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