This Bad Idea Is Patently Obvious

This week, the US Patent and Trademark Office (PTO) issued new rules related to filing new patents and prosecuting them through the patent office on the way to being issued. These are hundreds of pages of new regulations that change the way things are done from start to finish in that process. It is designed to reduce the amount of work that the patent office does (pushing much of it onto the patent filers) and reduce the backlog, which in some case is five years or more until the patent office even looks at a case for the first time.

Now, many of my readers won't care about this topic, which is fine. Most people have no reason to think about the process by which an inventor can get a legal monopoly on a new invention. However, I care quite a bit. I filed my first patent application 15 years ago, and I now have about 50 issued US patents. I've dealt extensively with patent attorneys and directly with the PTO. I've come at it from the perspective of a large company, a small company, and an independent inventor. So, I think my opinion is not only valid but based on significant experience.

Fundamentally, the idea of trying to fix the patent application backlog is good. The PTO has been hiring 1,000 new examiners per year to try to catch up, and so far hasn't made too much of a dent. However, the new rules have a number of very basic flaws that need to be addressed to make them reasonable.

1. The rules are being applied retroactively. This means that a case filed two years ago with no knowledge of these rules will still be treated under the new rules. It will still have all the same limitations. If us patent authors had known about these rules, we would have written the applications differently, but now it is too late to change them. In effect, the PTO is stealing some of the value of our intellectual property.
2. Much of the patent examiner's work is being transferred to the applicant. Certainly, this will increase the cost and time to file a patent application. But, more importantly, if the examiner uses the applicant's work, it is giving too much power to the applicant to define the patentability of his or her own invention; and, if the examiner doesn't use the applicant's work, the cost of that work is wasted.
3. The new rules are unfair to small inventors. A large company can adjust its budget, or can adjust the number of patents it files each year. An independent inventor, who used to be able to rely on the PTO examining the case and who also used to be able to defer some of the costs of determining the patent claims, now must spend all of that time and money up front. This is a huge hit to small-time innovation in this country.
4. This change also works against the truly innovative patent applications. For many inventions that are relatively small improvements on existing ideas, the new limits on number of claims and number of continuations are not a big hit. However, if your patent application describes a brand new category of product in lots of detail, you may want to claim your invention in several different ways. It may also take a few years and several tries to fully define the most important ways that the case is truly innovative. With the new rules, what used to make great sense for the truly innovative independent inventor is now severely restricted. It may no longer be feasible for the small inventor to patent that once in a lifetime great idea.

I call on the PTO to go back to the drawing board on this. Change the rules, and, when you do so, you must not reduce the value of existing patent applications. You must not price small inventors out of the market. You must not allow inventors to determine the patentability of their own inventions. And you must not put up barriers to the most creative inventors in our country.

The US Constitution says:

Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

The PTO should not have the power to diminish that right.