Whose Idea Is It, Anyway? 'Bounty Hunters' Track the Validity of Patents ; Patents Have Been Essential to Ensuring Innovation. but the US May Be Fencing Itself in by Putting Too Many New Developments under Patent Protection

Article excerpt

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 Universal's patent.

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 property.

"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 products. …


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