Rethinking Patent Law's Presumption of Validity

By Lichtman, Doug; Lemley, Mark A. | Stanford Law Review, October 2007 | Go to article overview

Rethinking Patent Law's Presumption of Validity


Lichtman, Doug, Lemley, Mark A., Stanford Law Review


INTRODUCTION: THE "BAD PATENT" PROBLEM
I.   THE PRESUMPTION TODAY
      A. Deference to the PTO
      B. Patent Certainty
II. LAYERED PRESUMPTIONS
      A. Eliminate the Clear and Convincing Evidence Presumption
      B. Gold-Plated Patents
      C. Deference to Adversarial Determinations
III.  OBJECTIONS
      A. Layered Presumptions Favor Patent Applicants Who Have Adequate
         Resources over Individual Inventors and Start-Ups
      B. Reducing the Presumption of Validity Will Encourage Frivolous
         Validity Challenges and Wasteful Searches for Obscure Prior
         Art
      C. Trained Patent Examiners Are Better at Determining Validity
         than Generalist Judges and Lay Juries
      D. The PTO Will Have Incentives to Grant Bad Gold-Plated Patents
      E. Presumptions Don't Matter Anyway
IV.   EFFECTS ON CURRENT STAKEHOLDERS
CONCLUSION

INTRODUCTION: THE "BAD PATENT" PROBLEM

The United States Patent and Trademark Office (PTO) is tasked with the job of reading patent applications and determining which ones qualify for patent protection. It is a herculean task. One problem is resources. The PTO expects more than 450,000 new patent applications to be filed in 2007. (1) To accurately evaluate the merits of all of those purported inventions would cost billions. Add to that the administrative costs of both interacting with all of the relevant lawyers and documenting the entire process, and the required budget would make patent application fees prohibitively expensive. (2)

Information is a second significant impediment to PTO review. Patent applications are evaluated early in the life of a claimed technology, and thus at the time of patent review there is typically no publicly available information about matters such as how well the technology has been received by experts in the field or whether consumers have deemed the technology to represent in some way an advance over existing alternatives. Worse, patent examiners cannot solicit these sorts of credible outsider opinions, not only because for many technologies it is unclear at the early stages who the relevant experts and customers might be, but also because patent evaluation is at least in part a confidential conversation between applicant and examiner, (3) designed to keep an applicant's work secret in case the patent application is ultimately denied. (4)

Given all this, it is hardly a surprise that the PTO makes mistakes during the initial process of patent review, granting patents that, on the merits, should never have been issued. (5) The real surprise is that the law makes issuance mistakes hard to reverse.

The culprit is a legal doctrine known as the presumption of validity. Under that doctrine, courts are obligated to defer to the PTO's initial determination that an invention qualifies for patent protection unless the defendant can show by "clear and convincing" evidence that the PTO erred. Thus, if the PTO issues a patent covering a technology that the purported inventor did not in fact pioneer, defendants face an uphill battle persuading the courts to overrule that errant determination. The theoretical justification is that patent examiners have expertise when it comes to questions of patent validity, and if patent examiners have decided that a given invention qualifies for protection, judges and juries should not second-guess the experts. (6) But the reality is that PTO expertise is brought to bear under such poor conditions that any advantages associated with expertise are overwhelmed by the disadvantages associated with insufficient funding and inadequate outsider information. Contrast that to court review, where information is a natural product of the adversarial process, and where financial constraints are reduced because only a tiny fraction of all issued patents end up sufficiently valuable and contentious to warrant litigation.

Thus, the presumption of validity backfires.

The rest of this article is only available to active members of Questia

Sign up now for a free, 1-day trial and receive full access to:

  • Questia's entire collection
  • Automatic bibliography creation
  • More helpful research tools like notes, citations, and highlights
  • Ad-free environment

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

Rethinking Patent Law's Presumption of Validity
Settings

Settings

Typeface
Text size Smaller Larger
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Full screen

matching results for page

Cited passage

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited passage

Welcome to the new Questia Reader

The Questia Reader has been updated to provide you with an even better online reading experience.  It is now 100% Responsive, which means you can read our books and articles on any sized device you wish.  All of your favorite tools like notes, highlights, and citations are still here, but the way you select text has been updated to be easier to use, especially on touchscreen devices.  Here's how:

1. Click or tap the first word you want to select.
2. Click or tap the last word you want to select.

OK, got it!

Thanks for trying Questia!

Please continue trying out our research tools, but please note, full functionality is available only to our active members.

Your work will be lost once you leave this Web page.

For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

Already a member? Log in now.