Anticipate This!™ | Patent and Trademark Law Blog

Testimony at “USPTO Oversight Hearing” on February 27, 2008.

Posted in General Commentary by Jake Ward on February 28, 2008

On February 27, 2008, USPTO Director Jon Dudas spoke before the U.S. House of Representatives Committee on the Judiciary in a “USPTO Oversight Hearing”.  His prepared testimony may be found here.  Others who also gave testimony include Robin Nazzaro from the U.S. General Accounting Office (GAO), Robert Budens, the President of the Patent Office Professional Association (POPA), and Alan Kasper, the First Vice President of the American Intellectual Property Law Association (AIPLA).

A USPTO press release relating to the hearing may also be found  here.

A notable quote from the testimony of Mr. Dudas follows:

Mr. Chairman, as we look to the future, we will make every effort to improve on our successful record in fiscal year 2007. Our patent examiners completed over 362,000 patent applications in 2007, the largest number over, while maintaining for the second year in a row an examination compliance rate of 96.5 percent, the highest in a quarter of a century. The allowance rate for patents is currently 44%. This is in contrast to allowance rates in excess of 70% just eight years ago.

Also, over the past few years, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.

Allowance rate of 44%?  BPAI affirming rejections 69% of the time?  A seemingly difficult time to be a patent applicant.

One has to wonder whether a dropping allowance rate is reason to celebrate.  We are admittedly biased, but does a dropping allowance rate really mean the patent system is improving?  Or does this just mean that more inventors are being denied their right to patents for their inventions?   

35 U.S.C Section 102:  A person shall be entitled to a patent unless–

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

(Emphasis ours).

U.S. Constitution – Article 1, Section 8, Clause 8 :

The 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; . . . .

(Emphasis ours).

JW Note – Reference to 35 U.S.C. Section 102 added 2/28/08 – Excellent comment Craig!

3 Responses

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  1. Craig said, on February 28, 2008 at 2:43 pm

    Jake:

    I agree with your position, and I too am concerned about the anti-patent bias at the USPTO. However, reading Article I section 8 as creating a constitutional right in citizens to receive patents is incorrect.

    Art. I s.8 is a grant of power to Congress. It states what Congress has the power to do: “promote the progress of science and useful arts,” and how it is empowered to do it: “by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Congress is empowered to grant the right, it does not exist on its own.

    Furthermore, nothing in the U.S. Constitution expressly requires that Congress establish a patent system at all. It simply has the power to do so if it chooses. Congress also has the power pursuant to Art. I s.8 “to borrow money on the credit of the United States” and “to declare war.” I’m sure that you would agree that reading these clauses as imposing upon Congress some obligation to exercise the power does not make sense.

  2. Jake Ward said, on February 28, 2008 at 3:29 pm

    Craig:

    Point well taken, and attempted to clarify above. I agree that there is no obligation on Congress to exercise the power set forth in Clause 8, but I also note that it has clearly chosen to do so.

    Section 102 states that a person is entitled, i.e. has a right granted by law, to a patent absent certain conditions set forth by Section 102, and further subject to other certain requirements such as non-obviousness, of which I’m sure you are aware. Would you agree or disagree that the law establishes a right for an individual to receive a patent for an invention? Your thoughts are welcomed.

    The problems of posting in a hurry . . . I should always stick to the rule of thumb – think first, post later.

    Thanks for the comments!

  3. wesley said, on March 1, 2008 at 4:45 pm

    Why have a Congress “choose” what parts of the Constitution to engage?

    By any standard, the Congress is of, by and for the People.

    There is clear Framers’ intent and lengthy discussion on protection of “information wants to be free”. The net-net of the arguments (Thomas Jefferson being reluctant but reasonable voice) is that by encouraging public, enabling disclosure, and offering quid-pro-quo protections, Society benefits. Nothing is lost when patents are applied for. Similarly, nothing is lost when speech is protected. Difference here is that applicants pay their way.

    Given the tortured reading of the 2nd Amendment, how do you dismiss the active “To promote …” Congress certainly has been busy extending copyright protections and there has been not substantive or objective evidence that patents harm anyone, let alone preventing advancement of “Science and useful arts”. How are these two “properties” fairly and objectively compared to introduce some form of normalized discussion. It would have been interesting to hear Mary Beth Peters testify on behalf of the Library of Congress on it’s activities as contrast.

    Is there a preference for real royal behavior of assigning rights to particular entities as a form of industrial policy? Will royalties make any more sense under that rubric? The US Patent system has been politicized, that is the simple observation. And, by the logic presented above, how does an Executive branch appointee report to Congress without any objective reading of the term “progress”?

    With due respect, there are certainly a lot of proponents for change, theoretically, but not much of a public discussion of how and what should be protected in an information-based economy.


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