American IPA

I received a notice today that one of my employer’s trademarks is now incontestable.  Upon placing that postcard in the file, it occured to me that there’s no reason that patents shouldn’t also become incontestable after a certain duration.

One of the ideas of so-called patent reform is to push post-issue review of patents to the USPTO, and to involve third parties to a greater degree.  If such changes are made to the law, it would make sense to draw a line in the sand after which most allegations of invalidity would be prohibited.  For example, inequitable conduct challenges would be prohibited after the patent becomes incontestable, wiping out that “plague” of patent litigation for mature patents.  Of course, just as with trademarks, allegations of outright fraud in the procurement of the patent would still be allowable.  The fact that a patent would become incontestable after a certain time also would incentivize potential defendants to challenge a patent in an inter partes USPTO process before the incontestability date, driving parties to use the USPTO instead of the courts to handle certain validity challenges.

Arbitrarily, the payment deadline of the last maintenance fee for a patent could be declared the date at which that patent becomes incontestable.  That would give challengers over 10 years to dispute the scope and validity of a patent, more than enough time.  From a statute-of-limitations perspective, the idea of incontestability is also a good one, and this date may even be too late from that perspective.  Recollections by inventors of actions they took during patent prosecution grow dimmer every year, and 11 years out may be as long as one can realistically expect an inventor to recall the arcana of patent prosecution. 

This patent reform wouldn’t cost a cent.  In fact, it would save litigants money by foreclosing certain arguments in litigation, and would save judicial resources by knocking out the days of trial time devoted to cobbling together an inequitable conduct defense out of the minor errors and inevitable glitches in the patent prosecution process.

Every trademark examiner is a lawyer, to the best of my knowledge.  As a result, for better or worse, legal analysis permeates trademark prosecution.  However, on the patent side of the USPTO, very few examiners are attorneys.  As a result, for better or worse, legal analysis is absent from patent prosecution.  I don’t fault the examiners; they do the best they can, both aided and hampered by the not-always-reliable and not-always-clear MPEP.  The first attorney to see a pending patent application is an overworked APJ at the BPAI.

A variety of members of the examining corps and management review the applicant’s appeal brief and decide whether the final action is defensible and whether to proceed to the BPAI with the case or return it to the Examiner for further prosecution.  However, none of those people making that decision are typically attorneys.  They lack the legal knowledge and experience to evaluate the legal merit of the appeal brief, and as a result get the decision about what to do with that brief wrong.  Legal arguments are ignored or misunderstood, and the process bogs down as a result.  One could argue that part of the BPAI backlog is a result of the failure of the technology centers at the USPTO to evaluate the odds of success of an appeal brief from a legal standpoint.  Cases that the examiner will clearly lose go to the BPAI, as well as poorly-written appeal briefs that the applicant will likely lose.  On the flip side, meritorious appeals can be cast aside and the case returned to the Examiner, resulting in more delay and cost to the applicant to renew the appeal.

A simple fix would be to require the appeal specialists of each technology center to be attorneys.  They would review the appeal briefs, examiner’s answers and reply briefs from a legal standpoint, evaluating the strength of the USPTO’s case.  The benefit to the system is that the attorney appeal specialists could recommend, or require outright, the allowance of claims where a final action is clearly in the wrong – taking a burden off the BPAI.  Those specialists could also review examiner’s answers, and decisions to return a case to prosecution, to ensure that appeal briefs of little merit are shot down adequately.  The amount of power to be wielded by the attorney appeal specialists is something that could be worked out; there is as much risk in granting too much power as in granting so little that they make no difference in prosecution.

Ideally, the attorney appeal specialists would be managed by the BPAI and not the individual technology centers, and would be rotated among tech centers periodically.  This would reduce the likelihood of their “capture” by individual technology centers, and help them retain independence.  Indeed, this could be a valuable career path for attorneys that moves them toward APJ status; performing years of case evaluations in a variety of technology centers would prepare them well for service on the BPAI.

This reform would have minimal cost, and has the potential to cut years off of appeal pendency.

I received an office action today for an application that has been pending for over 5 years.  This case has gone through 4 previous office actions with two separate examiners.  I thought we had reached agreement as to allowable subject matter after an interview almost 6 months ago.  Rather than a notice of allowance, I received yet another rejection, this time on written description grounds that several claim terms – all of which are defined in the specification, which have been used during prosecution for years, and which have never been questioned – are “indefinite.”  Talk about senseless, piecemeal examination designed to waste the applicant’s time and money!

Some days I can’t stand this job.