Patent Baristas

The General Counsel for the Department of Commerce (DOC), as overlord of the U.S. Patent and Trademark Office (USPTO), sent its own views on the provisions of H.R. 1908, the “Patent Reform Act of 2007,” to Howard L. Herman Chairman of the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary. This patent bill is a revised version of legislation considered in the last Congress to modernize the U.S. patent system through changes designed to improve patent quality, reduce patent litigation costs and further international harmonization of patent laws.

The letter lobbies for adding provisions that are not currently in the bill but that the USPTO believes “could usefully modernize the U.S. patent system” emphasizing that they are merely considering “what will benefit U.S. inventors and the American public.” So they say.

Under the heading “Quality Is A Shared Responsibility,” the letter outlines the euphemistically-named Applicant Quality Submissions (AQSs). Basically, from the Patent Office’s perspective, their work is much easier under the disclosure rules of the Accelerated Examination Program and the letter states that the “USPTO looks forward to taking the success of this model … to lower pendency, raise productivity and increase quality, and apply it to all patent examinations.” (emphasis added)

The letter does make a nod towards the Draconian penalties under inequitable conduct for innocently omitting information. The DOC calls for legislative action to change the appropriate standards as:

First, the standard for finding intent could be explicitly separated from the materiality of the withholding, requiring proof that the misrepresentation was knowing, with intent to deceive. Second, the doctrine could be changed to a standard requiring a finding that the information would have been relevant to a reasonable examiner. The “relevance” standard could usefully be framed in terms of whether a reasonable examiner would have allowed the patent, without more, but for the misrepresentation or omission.

With respect to materiality, Congress may wish to consider requiring the USPTO to define the term (as it does now) and limit the courts to finding inequitable conduct only in circumstances in which information that the USPTO has defined as material is misrepresented or withheld.

The letter makes further points on Interlocutory Appeals and Post-Grant Review while providing a big thank you for specifically authorizing the USPTO “to promulgate such rules, regulations and orders that the Director determines appropriate to carry out the provisions of Title 35 or any other applicable law or that the Director determines necessary to govern the operation and organization of the USPTO.”

See these and other points here: commerce-dept-letter-on-patent-reform.pdf.