Patent Reform Misses the Mark; Multi-Tier System Is Needed for the 21st Century

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Byline: Alexander I. Poltorak , SPECIAL TO THE WASHINGTON TIMES

The Patent Reform Act of 2010, being debated in the 111th Congress, promises to be another legislative fiasco because the reforms it proposes are not real reforms. Rather, the draft bill (S. 515) recently reported out of the Senate Judiciary Committee is a compromise between big computer companies (the so-called Gang of 15, which includes the likes of Microsoft and Intel) and Big Pharma. Universities, independent inventors and small businesses - America's true innovators and job creators - were almost totally squeezed out of the discussions. In four years of hearings, the Judiciary Committee did not invite a single inventor to testify.

The resulting bill, if passed, will weaken our patent system, making patents less valuable and more difficult to enforce, and ultimately will hurt national innovation and job creation.

The inexplicable thing about the Patent Reform Act is that it does not even attempt to address the most fundamental problems in our patent system. Conceived by the Founding Fathers, with its source in the U.S. Constitution, the patent system reflects the economic realities of the Industrial Revolution - not the knowledge economy of the 21st century.

Its most outdated feature is the uniform patent term that patent law applies to inventions in all industries, regardless of the product life cycles prevalent in those industries. A patent today grants the same 20-year term to both a new drug and a computer invention. This one-size-fits-all approach no longer works. We need different terms of exclusivity for different industries with radically different product life cycles and a Patent Office that is capable of examining patent applications within one year.

Another fundamental problem of our patent system, which, incidentally, stems from the same one-size-fits-all approach, is the problem of patent quality or, more specifically, the problem of obviousness. For an invention to merit patent protection now, it must pass essentially two tests: novelty and non-obviousness.

Novelty is straightforward: If the product in question has not been invented by someone else, it is considered novel. That means the patent examiner was not able to find a single reference, such as a patent or a publication, describing every element of the claimed invention. But what if the examiner finds some of the elements in one reference and other elements in another reference or several other references predating the invention, which are called prior art? The question then becomes one of obviousness. The examiner must decide whether the invention would have been obvious for a person of ordinary skills in the art to conceive of the invention in light of the prior-art references and general state of knowledge at the time of conception of the invention. This question is what puts patent lawyers' children through college.

There is no bright line rule in patent law to determine what is obvious. The Patent Office applies the same yardstick of obviousness to inventions that are true breakthroughs, such as the invention of a laser or a semiconductor, and to mere improvements that make old products work better. A new kitchen gadget or a minor technological improvement is not on par with a brand-new biochemical compound that promises the cure of AIDS or cancer. …