Carrots and Sticks to Create a Better Patent System

Abstract

It is widely recognized that the Patent Office grants overly broad patents since it has deficient knowledge of the relevant prior art, especially in high technology areas with significant non-patent prior art. This paper presents five strategies to: (a) increase the quantity and quality of information obtained by the Patent Office from the patentee and her competitors; and (b) to create disincentives for patentees to engage in opportunistic behavior by capitalizing on the information asymmetry between patentees and the Patent Office. The first and second strategies propose changes to our current prior art information disclosure rules based on insights from the economic theory of incomplete contracts. The first strategy proposes that we give patentees the option of presenting an expanded information disclosure statement (IDS) to the Patent Office disclosing all relevant prior art, including an analysis of how the claims, as filed, relate to this disclosed prior art. If the patentee chooses to exercise this option, the issued patent will be granted a specific presumption of validity with respect to the disclosed prior art. In the alternative, if the patentee does not choose the expanded IDS option outlined above, then the second strategy proposes that we eliminate the presumption of validity for any patent that issues under the current disclosure rules. As an optimal alternative, the first and second strategies can be adopted together. As another alternative, the second strategy can be adopted by itself. Based on insights from cognitive dissonance and from empirical data regarding oppositions in Germany and Japan, the third strategy proposes that we institute a pre-grant, third party, patent opposition system based on a publication date that is set at 90 days from the issuance of the first Office Action. This proposal creates a mechanism for third parties to participate in the patent examination process prior to its issuance. Addressing issues in software patents, the fourth strategy proposes that we mandate the use of representational languages in the specification of computer software patents in order to satisfy disclosure requirements and to explicate the metes and bounds of the claimed patent right for software inventions. The fifth strategy proposes that we create a one-way, pro-defendant fee shifting system if patents are invalidated or revoked in a litigation or opposition proceeding based on certain categories of prior art that are reasonably likely to be discovered by a diligent patentee. This proposal attempts to increase the costs borne by the patentee of engaging in opportunistic enforcement of bad patents. If these strategies were implemented in concert, we would put in place incentives and mechanisms to create a better informed Patent Office that is more likely to grant patent rights commensurate with innovation and not impoverish the public domain.