It's a case that anyone who has ever struggled for possession of
the TV remote could relate to.
Universal Electronics, a company based in Cypress, Calif., holds
a patent on a multipurpose remote-control device - something that
can program several electronic devices in, for instance, a house:
the lights, the TV, the sound system. And just over a year ago,
Universal filed suit against four other manufacturers of similar
devices, claiming patent infringement.
But Universal's patent on the multipurpose remote is being
challenged - a development that sent Duane, a software engineer in
southern New Jersey and a bounty hunter, digging deep into the
microfiche collections of his local public library.
Duane, who didn't want his last name used, thought the Universal
remote sounded like a good idea - so good, in fact, that he
remembered that someone had already invented such a thing. His
triumph was to find a copy of a Byte magazine article he recalled
from 1987 that told how to build a remote like Universal's. His
diligence won him a $10,000 bounty offered by a litigant challenging
Duane is a foot soldier in the struggle to keep the United States
patent system honest. In this case, finding the article - like
finding a blueprint or a technical drawing - provided "prior art,"
evidence that a certain invention existed before the current
claimant invented it. Such a discovery can invalidate a patent.
Boston patent attorney Charles Cella, founder and chief executive
of Bounty Quest, the company through which Duane won his prize,
describes the situation as a "patent-quality crisis." Close to half
of all patents are invalidated when litigated, he says.
The ongoing Universal case raises a number of questions about the
US patent system. Are patents being granted undeservedly, simply
because examiners are too swamped to give applications due
diligence? And is America patenting itself into a corner: granting
too many patents, and patents of the wrong kind, thus impeding the
capacity for further innovation?
It's a crisis most civilizations would love to have.
No shortage of ideas
In 1899, Charles Duell, commissioner of the US Patent Office,
said "Everything that can be invented has been invented." But any
number of companies generate more new ideas than they know what to
do with: 10 patentable ideas per engineer or designer per year is a
number tossed around in patent-law circles.
Applications stream into the US Patent Office at a rate of well
over 300,000 a year. Some are staggeringly complex. "Technology
develops so rapidly that it's almost impossible to absorb it," says
James Rogan, US undersecretary of Commerce for intellectual
"You see all these inventions that changed the face of the world,
and the original patent art fit on a single piece of paper," he
adds. "The new biotechnology patents come in on six CDs - the
equivalent of 12 million pages."
Mr. Rogan notes that "every successful civilization has a strong
patent system." From the founding of the republic, the patent system
has been essential to ensuring innovation and technology transfer. A
patent has represented a certain tradeoff: a time-limited monopoly
right to exploit an invention in exchange for full disclosure from
the inventor of how it works.
The United States and other advanced countries have long made
adoption of Western standards of intellectual property protection
the sine qua non of freer trade for developing countries desperate
for access to Western markets.
But now some critics are concerned that the innovative American
economy is fencing itself in.
"It's clear that there is a danger," says James Boyle of Duke
University Law School, emphatically. The problem, he says, is that
so much innovation is being put under patent protection that
inventors, to stave off the threat of costly patent-infringement
litigation, often end up entangling themselves in an expensive web
of licensing arrangements to protect themselves as they work on new