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Gold-plated patents? October 3, 2008

Posted by Brian Schar in General.
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Much discussion has resulted from the proposal from the Obama campaign for so-called “gold-plated patents.”  That is, the Obama proposal would create two classes of patents – one with a presumption of validity and one with a presumption of extra validity.

I don’t know that such a change would matter that much.  After all, looking at Federal Circuit decisions over the past decade, that court does not appear to grant much presumption of validity to issued patents, and is awfully quick to find the slightest trivia to rise to the level of invalidating “clear and convincing evidence.”

But fundamentally, I think the Obama campaign is on to something.  I would support a two-tier system in which one class of patents had no presumption of validity, and another class that did in fact have a presumption of validity.  The class with no presumption of validity would be registration-based – the applicant would simply deposit the application at the USPTO in the same manner as a copyright registration, and the USPTO would print it (or even skip printing altogether and place it in the USPTO database).  The applicant could perform as much of a search as he or she wanted, and draft claims accordingly.  Indeed, one might even hire a patent searcher to act in the same manner as a USPTO examiner, in order to draft claims that could be proven valid in litigation.

Given that a patentee has to fight validity in every litigation anyway, where the invalidating bar is set pretty low in effect, I’m not sure this would be much of a change from the current system.  Letting applicants choose a registration-based path would also substantially unburden the USPTO of its backlog.  Hal Wegner of Foley & Lardner makes a convincing case that the USPTO can’t hire its way out of the current backlog situation, which will only get worse as more Chinese cases hit the system.  I would consider choosing registration for a subset of my less-complex or less-important cases, saving conventional examination for the more important ones.

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1. Tin-plated patents « American IPA - December 10, 2008

[…] December 10, 2008 Posted by Brian Schar in General. trackback In an earlier post, I wrote in favor of a registration-based patent track, in which patents would be registered like […]


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