How The Patent Office Outsourced Its Job To Non-Expert Jurors

from the this-is-sad dept

I already wrote about Larry Downes blog post suggesting that Paul Allen's patent lawsuits might actually be an attempt to expose problems with the patent system, but I wanted to discuss a different point Downes raised earlier in the post, in discussing the problems of the patent system. Obviously, we've discussed many ways in which the patent system today fails to do what it's supposed to do, and a big part of the problem is the fact that the USPTO seems to approve a ton of crappy patents. This isn't because the examiners aren't trying hard, but just because the very nature of the system, and its inherent lack of scalability, mean the incentives are always going to lead to approvals of bad patents.

But what does this mean in practice? Downes highlights the problem this causes in a very simple way: it's the USPTO outsourcing the patent review process to unskilled juries:
The result has been the creation of a shadow patent examination process through litigation. The grant of a patent is no longer the final step, in other words. The de facto examination really takes place when the holder tries to enforce the patent against an alleged infringer, and the defendant claims invalidity of the patent as a defense. When such cases go to trial, which they rarely do, a jury of laymen are then tasked with doing the work avoided by the patent examiner.

In effect, the patent office has outsourced its job to the judiciary and in particular to a jury of non-experts. If nothing else, that is a feature of the modern system that absolutely no one is happy with, or in any event that no one can justify.
This is a pretty big problem when you think about it. Already, there are concerns that the supposed patent examiner "experts" often don't have enough expertise to judge the non-obviousness of certain inventions. To then shift the burden to inherently unskilled non-experts to make that decision, even with advocates for both sides fighting it out in front of them, seems to go against the very idea that patents are supposed to only be allowed if they are non-obvious to those of ordinary skill in the art. Asking those not skilled in the art to make that judgment seems like a mistake.

Reader Comments (rss)

(Flattened / Threaded)

  1. identicon
    Anonymous Coward, Sep 1st, 2010 @ 11:19am

    reply to this | link to this | view in thread ]

  2. icon
    ChurchHatesTucker (profile), Sep 1st, 2010 @ 11:21am

    No shit

    Patent examiners ain't nothing but hoes and tricks.

    reply to this | link to this | view in thread ]

  3. identicon
    Anonymous Coward, Sep 1st, 2010 @ 11:23am


    err...I meant []...oops

    reply to this | link to this | view in thread ]

  4. identicon
    Peter Sanders, Sep 1st, 2010 @ 11:31am

    I'm happy with the article, but I see the biggest problems this way.

    First, the expert reviewer problem. How can a team of experts of sufficient size and expertise be had given the USPTO's budget? What is the likelihood that USPTO would be given such a budget?

    Secondly, it ends up that the alleged infringer must do the work of the absent or missing expert paten examiner, and do this work so weel that it could be verified by a jury.

    reply to this | link to this | view in thread ]

  5. icon
    ChurchHatesTucker (profile), Sep 1st, 2010 @ 11:38am


    "Secondly, it ends up that the alleged infringer must do the work of the absent or missing expert paten examiner, and do this work so weel that it could be verified by a jury."

    That is the de facto case, and makes one wonder why we even bother to have patent 'examiners' in the first place.

    reply to this | link to this | view in thread ]

  6. icon
    sehlat (profile), Sep 1st, 2010 @ 11:43am

    Actually, you CAN justify it.

    Just remember, litigation is a lawyer's rice bowl. If crappy patents didn't get approved, there'd be a lot of starving IP lawyers, and we can't have that, can we?

    reply to this | link to this | view in thread ]

  7. icon
    :Lobo Santo (profile), Sep 1st, 2010 @ 11:57am

    Re: Actually, you CAN justify it.

    Perhaps this issue is that lawyers no longer have nay natural predators to thin out the herds.

    At this rate, the lawyers will deplete their blood, er, I mean food supply and end up starving to death anyway.

    reply to this | link to this | view in thread ]

  8. identicon
    darryl, Sep 1st, 2010 @ 12:23pm

    "Just created" ?

    The courts have allways had the final word in issues of law, and patents are the law (I know you hate that, but its true).

    Sure, they get 'non-expert' jourers to decide murder and death sentice cases.

    Jourers are not supposed to be the experts, they are supposed to be imparial.

    The courts and the defendants and procecuters will bring in witnesses and experts to testify to convince the laymen of the jury one way or the other.

    Its how your legal system works !!!, what is your suggested alternative.

    "Just created", Einstein was the expert witness in the court case for the patent on the north seeking gyroscope, so saying dealing with patents in court with jourers is nothing new. (to most of the world anyway).

    Or, would you rather have it so that USPTO is the final word, if (as in this case) they have issued a patent, you want that to be the end of the story, even if you think the patent is wrong (or worse, YOURS).. ?

    Or would you prefer that after you find out your patent has been patented by someone else, (after you), you have no recall to the law, to have the issue resolved..

    Great plan Mike, !!! that will work..

    So the next murder trial you see, if the jourers are not all convicted killers then its not right or fair for the trial to continue.

    Seems you like to twist the issues to suit your bias (still), it depents on the subject matter if you agree with the law or are against the law, and touch of consistency would be nice.. and too much to hope for. :)

    reply to this | link to this | view in thread ]

  9. identicon
    Jack Holt, Sep 1st, 2010 @ 12:37pm


    Interesting discussion.

    I'm for the current system with all its inherent flaws. But maybe only because I can't think of a better alternative.

    Are murder trials using DNA evidence any less technical? Or do the attorneys and expert testimony know how to present the evidence in such a way that the jury can understand, and make a good decision?

    Just as with murder trials, there is more evidence presented than just the technical details on which, say, the forensic lab technician would need to review.

    reply to this | link to this | view in thread ]

  10. icon
    The Infamous Joe (profile), Sep 1st, 2010 @ 12:44pm

    Re: "Just created" ?

    I can't tell if you're a confused person who does not speak english as a first language or an idiot, so I'm going to assume you're the former.

    The patent office is supposed to reject patents that are applied for "inventions" that are obvious to someone skilled in that field, among other reasons. Clearly, they do not and the result is many "bad" patents are approved. Since whomever applied, and received, the "bad" patent feels they have the law on their side, they then begin to sue every large corporation that may be using their "Shutdown an OS" patent. (or whatever) If the resulting confrontation makes it to the court room, a jury of 12 *non-experts in the field* get to decide if the patent is valid or not. (Which was the patent examiner's job, you see?)

    Please note, if the patent office was performing as required, very few "bad" patents would make it through the approval process so less people would get sued, and everyone would be less afraid to actually innovate.

    Or, if that was tl;dr for you: The patent office is no longer a filter and has become a pump.

    reply to this | link to this | view in thread ]

  11. identicon
    Anonymous Coward, Sep 1st, 2010 @ 1:29pm

    Re: Re: Actually, you CAN justify it.

    Hrm. So you're suggesting a hunting season? I, and my friend Will, could get behind that.

    reply to this | link to this | view in thread ]

  12. identicon
    Anonymous Coward, Sep 1st, 2010 @ 1:38pm

    The title to this article and the quote attributed to Mr. Downes read more like something an academic would say than by persons who have actually practiced before the USPTO and the courts.

    In other words, the illusion of expertise by persons lacking such expertise. Perhaps if they actually took the time to learn the law (which involves much, much more than just Title 35 and caselaw), secured admission to the USPTO Bar, actually prepared and prosecuted applications for a few years, and actually litigated such matters, they would come to realize that such comments are plainly silly, uninformed, and well off the mark.

    reply to this | link to this | view in thread ]

  13. icon
    iamtheky (profile), Sep 1st, 2010 @ 1:42pm

    All cases that go to jury trial are handed to "unskilled non-experts" (though no skills would infer not an expert).

    Good thing all the non-obvious crimes are handled by skilled pros that way we dont have juries of our peers mucking up the process. If only they would invent something like an 'expert witness'.

    just seems like you could insert anything for:

    concerns that the supposed patent examiner "experts"
    concerns that the supposed forensic "experts"
    concerns that the supposed internet blog "experts"

    reply to this | link to this | view in thread ]

  14. identicon
    Anonymous Coward, Sep 1st, 2010 @ 1:48pm


    Oh look, another appeal to authority. How original.

    reply to this | link to this | view in thread ]

  15. icon
    EdB (profile), Sep 1st, 2010 @ 2:12pm

    juror in a hurry?

    So ... why would a juror not be totally capable of seeing if a patent is bogus or not? To me the ultimate value in this observation is that the Patent People can just hire folks at slightly more than min wage for no more than a year each to sit, 12 at a time, and review patents. If they can't get to a unanimous decision then it goes back to the traditional rubber stamp method.

    reply to this | link to this | view in thread ]

  16. icon
    JTO (profile), Sep 1st, 2010 @ 2:14pm

    Re: "Just created" ?

    You're funny. When I say, "you're funny," I mean your argument completely side-steps the point of the article and takes much of the content out-of-context. Also, your spelling makes me giggle. When I say, "giggle," I mean that it's laughable. Really. Get a dictionary or at least use the spell-check.

    reply to this | link to this | view in thread ]

  17. icon
    nasch (profile), Sep 1st, 2010 @ 2:30pm


    The point is not that juries are not good for anything. That should be obvious, but multiple people are trying to read it that way for some reason. Criminal law says defendants are supposed to be tried by "a jury of their peers" and that's what happens. So far, so good. Patent law says obviousness is supposed to be determined from the perspective of someone "of ordinary skill" in the field. That is not what is happening. Problem.

    reply to this | link to this | view in thread ]

  18. identicon
    Anonymous Coward, Sep 1st, 2010 @ 3:02pm

    Re: Re:

    Not to authority, but to experience...and it is experience that headllines and quotes such as here demonstrate is clearly lacking.

    reply to this | link to this | view in thread ]

  19. icon
    TtfnJohn (profile), Sep 1st, 2010 @ 3:26pm

    Re: Re: "Just created" ?

    In your first paragraph assume the latter.

    It's been said, with some justification that law students are those who cannot get through the first year or two of arts studies in any other field including basket weaving 101 and 102.

    darryl is simply an illustration of that principle who has yet to gain a coherent grasp of the English language and who, by all appearances wasn't capable of successfully completing the remedial writing and comprehension courses that too many universities have to put on because high schools don't do their jobs properly. So, he's turned to study of the law. Rather, he claims he has. No verifiable confirmation of that claim as far as I know. Kinda like so many bogus patents.

    BTW darryl, where the option is available only a patent idiot of a defendant would elect judge and jury in these cases preferring judge alone as, one hopes, the judge is perceptive enough to understand things, ask for help when he/she doesn't and highly skilled in the art of separating the truth from well spun bullshit. Judgements tend to be far more reasonable that way.

    Just ask SCO.

    reply to this | link to this | view in thread ]

  20. icon
    TtfnJohn (profile), Sep 1st, 2010 @ 3:44pm

    Re: Re: Re:

    Should, however, the governing law and regulation(s) pursuant to that law insist the a patent is granted by a person(s) with expertise in the field that the patent is in makes having a law degree or not totally irrelevant.

    It also calls into doubt the ability of a group of twelve upright and honest citizens to come to an intelligent and informed finding on balance of probabilities, the point of civil law, you know, as opposed to beyond a reasonable doubt, highly unlikely no matter how diligently they may try to reach a fair and impartial decision.

    Mind you, it's a perfect lawyer's answer in that it deflects from the issue at hand while attempting to cement the lawyer's ability to make a killing in acting for the plaintiff in these cases. Thar's gold in them thar hills, isn't there? The law be damned.

    reply to this | link to this | view in thread ]

  21. icon
    iamtheky (profile), Sep 1st, 2010 @ 3:56pm

    I also hope the forensic experts are "of ordinary skill" in the field.

    I also think you airballed on the "which they rarely do" part, as in let me detract from the larger issue by showing you one of the many outcomes regardless of their frequency, like the racist patent arbiter.

    reply to this | link to this | view in thread ]

  22. icon
    TtfnJohn (profile), Sep 1st, 2010 @ 4:19pm


    You also miss the point that, in part, criminal proceedings take place in front of a jury of one's peers to protect the subject/citizen from abuse by the monarch/state as does the requirement of "beyond a reasonable doubt".

    Civil law is different in that beyond a reasonable doubt doesn't enter into it the test is balance of probability. Also civil actions are between persons not the state vs a person. A jury may be the most effective way of dealing with most actions though with some it's troublesome in the extreme. In most jurisdictions that's why there's the option of judge/jury or judge alone often at the election of the defendant in the suit.

    Mind you the second option often doesn't yield gazillions for lawyers on either side to the first is often preferred because juries are infamous in civil actions for granting penalties far, far in excess of any damage done.

    reply to this | link to this | view in thread ]

  23. icon
    sehlat (profile), Sep 1st, 2010 @ 4:19pm

    Re: Re: Actually, you CAN justify it.

    Actually, a hunting season for lawyers has been proposed, subject to some strict rules to make the hunt "fair" for some value of fair.


    Government Department of Fish and "WildLife" Sec. 1200

    1. Any person with a valid hunting license may harvest attorneys.
    2. Taking of attorneys with traps or deadfalls is permitted. The use of currency as bait is prohibited.
    3. Killing of attorneys with a vehicle is prohibited. If accidentally struck, remove dead attorney to roadside and proceed to nearest car wash.
    4. It is unlawful to chase, herd, or harvest attorneys from a snow machine, helicopter, or aircraft.
    5. It shall be unlawful to shout "whiplash", "ambulance", or "free Perrier" for the purpose of trapping attorneys.
    6. It shall be unlawful to hunt attorneys within 100 yards of BMW dealerships.
    7. It shall be unlawful to hunt attorneys within 200 yards of courtrooms, law libraries, whorehouses, health spas, gay bars, ambulances, or hospitals.
    8. If an attorney is elected to government office, it shall be a felony to hunt, "entrap", or possess it.
    9. Stuffed or mounted attorneys must have a state health department inspection for rabies, and vermin.
    10. It shall be illegal for a hunter to disguise himself as a reporter, drugdealer, pimp, female legal clerk, sheep, accident victim, bookie, or taxaccountant for the purpose of hunting attorneys.
    BAG LIMITS (Maximum number of catches allowed per hunting season)
    1. Yellow Bellied Sidewinder... (2)
    2. Two-faced Tort Feasor... (1)
    3. Back-stabbing Divorce Litigator... (4)
    4. Small-breasted Ball Buster... (3) (Female only)
    5. Big-mouthed Pub Gut... (2)
    6. Honest Attorney... (0) (On the Endangered Species List) (Illegal to hunt)
    7. Cut-throat... (2)
    8. Back-stabbing Whiner... (2)
    9. Brown-nosed Judge Kisser... (2)
    10. Silver-tongued Drug Defender... ($100 BOUNTY)

    reply to this | link to this | view in thread ]

  24. identicon
    Lawrence D'Oliveiro, Sep 1st, 2010 @ 6:35pm

    Re: New Regulations For The Hunting Of Lawyers

    And the penalty for being accused of breaking those regulations is to be shot.

    What was that about “due process” and “innocent until proven guilty”? Good luck finding a lawyer for that!

    reply to this | link to this | view in thread ]

  25. identicon
    Anonymous Coward, Sep 1st, 2010 @ 8:44pm

    Re: Re: Re:

    Oh, yes, "clearly." That must be why your entire argument is noting more than...oh, yes, an appeal to authority.

    Convincing, as always.

    reply to this | link to this | view in thread ]

  26. identicon
    Juan Trujillo, Sep 2nd, 2010 @ 4:03am

    Heard abut the last patent granted to Microsoft?

    United States Patent: 7788474 granted to Microsoft for 'shutting down an operating system' Bravo USPTO!

    reply to this | link to this | view in thread ]

  27. icon
    Chris Ball (profile), Sep 2nd, 2010 @ 7:20am


    As a (soon-to-be) patent lawyer in another country, I have to say that it still blows my mind that the U.S. does jury trials for patent lawsuits. Here in Canada, there is a general principle that if the subject of a civil trial is too complex for a lay jury to understand, then it is always tried by judge alone. As a result, I don't think there's ever been a jury patent trial here. (Not to mention that most IP litigation takes place in the Federal Court, where there are no juries.)

    I for one would love to see patent trials carried out by a jury of "persons of ordinary skill in the art" a true jury of the patentee's peers, if you will. Good luck trying to find six PhDs in organic chemistry to serve as jurors though!

    reply to this | link to this | view in thread ]

  28. identicon
    Gene Cavanaugh, Sep 2nd, 2010 @ 5:27pm

    Patent problems

    The present IP system (especially copyright, but here we are talking about patents) is TERRIBLE, and needs fixing.
    However, to hand that task to the USPTO is deluding yourself. There are two overwhelming problems with the system:
    1. Self-financing, so for an organization that grows and prospers, essentially "for profit", which is against the purpose of the Office.
    2. Under the thumb of Congress, whose members have to sell themselves to the highest bidder to raise sufficient campaign funds (much less get big bonuses later).
    Fix those problems, and the rest will take care of itself.

    reply to this | link to this | view in thread ]

Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Save me a cookie
  • Note: A CRLF will be replaced by a break tag (<br>), all other allowable HTML will remain intact
  • Allowed HTML Tags: <b> <i> <a> <em> <br> <strong> <blockquote> <hr> <tt>
Follow Techdirt
Insider Shop - Show Your Support!

Hide this ad »
Essential Reading
Techdirt Deals
Techdirt Insider Chat
Hide this ad »
Recent Stories
Hide this ad »


Email This

This feature is only available to registered users. Register or sign in to use it.