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IP, Patent

O’Reilly Radar Desperately In Need Of Patent WD-40

Over at the O’Reilly Radar blog, writer Andy Oram asks “Should the patent office open its internal guidelines to the public?” The question in Oram’s blog title is the last thing that needs to be addressed, however.  The first thing that needs to be addressed is the following paragraph:

As a simple example of the bias toward extending patents, consider that nobody ever appeals a patent examiner’s decision to grant a patent, but aggrieved applicants often appeal decisions to deny a patent. And defending the decision to deny a patent costs the patent office a lot of money, which it can’t make up from fees. Because the appeals court hears of dubious decisions only when a patent it denied, it has no opportunity to say, “Woah there, stop expanding the patent system.”

Patent lawyers should spot right away the statements in here that are just wrong, wrong, wrong.  Maybe the O’Reilly Radar’s patent knowledge is a bit rusty … so to squirt a little WD-40 on the problem (as all good Mechanical Engineers are taught):

  • nobody ever appeals a patent examiner’s decision to grant a patent” (first emphasis mine).

Oh really?  Tell that to the inventors of more than 11,000 patents that the US Patent Office has been asked to reconsider.  On top of that, in more than 7500 of these cases, the request came from someone other than the patent owner.  Add to that another 1100 requests of third parties to participate interactively with the PTO, of which nearly 1000 were granted under a procedure that is barely 10 years old!  But, unlike Oram (who offers no citation to these misguided assertions), I won’t make you take my word for it. Those are the patent office’s own statistics on ex parte and inter partes re-examination filings.

  • “the appeals court hears of dubious decisions only when a patent it denied” (emphasis mine).

Perhaps Oram has never heard of this little thing called patent litigation.  You see, what Oram isn’t telling you is that the same court that hears appeals from inventors who have been denied patents also hears appeals from trial courts where issued patents are being enforced.  In these situations, the Court of Appeals for the Federal Circuit typically has ample opportunity to decide that a patent should not have issued.  In fact, as a whole, the judges on the Federal Circuit agree that the Patent Office issued a valid patent more than half of the time.  Again, don’t take my word for it.  Law professor Mark Lemley reported the statistics in his 2009 paper How Federal Circuit Judges Vote In Patent Validity Cases.

Now, about Oram’s overall question, he explains that “the administrators of the patent office provide guidance to examiners in a number of internal memos that are never exposed to the public.”  (emphasis mine).  It is true that internal memos are often circulated, especially when the Patent Office leadership thinks the examining corps needs guidance for interpreting the ever evolving legal doctrines surrounding their work.  Often, these memos are shared with bloggers, patent lawyers and other folks who disseminate the message amongst the interested community. But more importantly, when new rules or guidelines are concrete enough to be useful, they are made public, comments from the community are solicited, and if adopted, are placed into a very comprehensive manual.  So, to answer Oram’s question, should the patent office open its internal guidelines to the public? They have, in the form of a several thousand page long manual called the (wait for it …….) Manual of Patent Examining Procedure.

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