As I mentioned in a previous blog post, different aspects of patent quality are affected by different actors in the patent system. Improving patent quality requires careful examination of the various policy levers available to different actors. For instance, the US Patent and Trademark Office (USPTO) is bound by the statutes set forth by Congress. Because the USPTO is the implementer of the statutes, it is in the best place to ensure the legal quality of patents and reduce the uncertainty that arises from poor legal quality.
The legal quality of a patent is an important factor in determining its value and enforceability. Ensuring legal quality is arguably the primary role of the USPTO. From the standpoint of the law, a patent is high quality if it:
- Adheres to the legal standards of patentability
- Claims a scope that matches the scope of the invention
- Clearly articulates #1 and #2
Obviously, the legal standard for patentability plays a role in the quality of patents. The legal standard should be designed to encourage innovation and provide strong protections for inventors, while also ensuring that only truly novel and non-obvious inventions are granted patent protection. But, again, this is the responsibility of Congress, as interpreted by the courts. If you have a problem with the statute, go to Congress. If you have a problem with implementation, go to the USPTO.1
The best thing that the USPTO can do is to ensure that the patent adheres to the conditions of the statute. A patent that adheres to the statute is more likely to be upheld in court and to provide clear protection for the inventor. Beyond that, the claims—the legal metes and bounds—should overlap entirely with the scope of the actual technological advancement in the patent. Narrower claims will not provide the reward necessary to provide an incentive to invent. Broader claims may deter follow-on invention. This is no easy task, but we can agree that the proper scope should match the actual invention.
The third point above is about the clarity of the patent rights. A patent with high legal quality will have less uncertainty about the assigned property right. Well-defined patent rights reduce infringement (by making the boundaries clear), facilitate market transactions (licenses and sales), and increase freedom to operate (by making clear what is not patented).
In fact, clear property rights are so important for the efficiency of markets that they were the subject of a Nobel Prize (“The Coase Theorem,” after Ronald Coase, in 1991) and they are one of the few areas on which economists have a consensus. No two-handed economists here!2
There are several factors that contribute to the legal quality of a patent. One of the most important is the quality of the patent application itself, and the effort put forth by applicants. A well-written application that clearly and concisely describes the invention and its novelty is more likely to result in a high-quality patent.
The quality of the patent examination process is also crucial in determining the legal quality of a patent. The USPTO is responsible for examining patent applications to ensure that they meet the necessary legal standards for patentability. A thorough and rigorous examination process is essential for ensuring the legal quality of issued patents.
Overall, the legal quality of a patent is a combination of the quality of the patent application and the quality of the examination process. But, like any process, there is a trade-off: greater effort on high-quality applications and high-quality examination comes at a cost. We will never have a perfect process, so we will never have perfectly clear patent rights, and we will never eliminate uncertainty in patent rights.
Still, this effort needs to focus… to be effective. Yesterday, my bicycle was stuck in my garage and I was in a hurry. So, I yanked on it. But, it was still stuck and I was a little impatient and perhaps in a little frustrated, so I yanked again. Hard. Too hard. The bike dragged with it my daughter’s stroller, which knocked over a potting shelf, spilling dirt all over the stroller and my bike, and causing my daughter to ask “is Daddy OK?” No. Daddy’s not OK. He’s embarrassed, and he’s got a big mess to clean up because he used brute force where he should have taken the time to see what the actual problem was.
Before proposing too many changes to the patent examination process, it is important to focus on incentives. Do applicants have an incentive to write claims that are not broader or narrower than the scope of the invention? What parts of the process incentive that? Do examiners have an incentive to put effort on quality examination rather than (or in addition to) throughput? Do we have ways of measuring effort or quality by applicants and examiners?
There is some excellent research being done in these areas . Practitioners and policy-makers should pay careful attention before making too many process changes. Take time to identify the problems and opportunities, to avoid… so we don’t end up covered in potting soil.
Dr. Alan Marco is the Chief Economist for Ocean Tomo, a part of J.S. Held, having previously served as the Chief Economist for the USPTO. He is an economist who specializes in intellectual property and innovation. To learn more about Dr. Alan Marco, visit https://www.oceantomo.com/team/alan-marco-phd/
1 If you’ve got a problem with the courts, you probably still have to go to Congress
2 Harry Truman is said to have wished for a one-handed economist, because he wanted decisive economists who would not constantly consider “on the other hand.” With respect to property rights, economists agree: clearer is better.