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Gold-plating of patents: Obama's bad AND recycled idea

By Lawrence B. Ebert, Esq.

One of Barack Obama's ideas is the gold-plating of patents. This is not a new idea. In an IPBiz post in the year 2005, titled Antiquated U.S. patent justice system thwarts innovators?, gold-plating was discussed. IPBiz also discussed the idea in
Gold-plating patents: been there, proposed that....

In the initial article in Regulation, Lemley et al. started with a bad premise

Bad patents are everywhere: cov-
ering obvious inventions like the crustless
peanut butter and jelly sandwich, ridiculous
ideas like a method of exercising a cat with
a laser pointer, and impossible concepts like traveling faster
than the speed of light. More troubling, countless patents
that seem reasonable to a lay audience overreach in technical
fields as blatantly as that peanut butter sandwich overreach-
es in a familiar one.

At the time, Lemley was confused about the patent grant rate argument, and
had incorrectly adopted the Quillen/Webster numbers. He changed his mind in
the later "rubber stamp" paper, but unfortunately continued to carry some of the
accompanying false intellectual baggage.

Gold-plating was the second part of a proposal:

Second, because legitimate inventors need as much cer-
tainty as the law can give them, we would give applicants the
option of earning a presumption of validity by paying for a
thorough examination of their inventions. Put differently,
applicants should be allowed to ?gold-plate? their patents by
paying for the kind of searching review that would merit a
presumption of validity. An applicant who chooses not to pay
could still get a patent. That patent, however, would be subject
to serious?maybe even de novo?review in the event of litiga-
tion.

Lemley further discussed (re-cycled?) the idea in Rethinking Patent Law's Presumption of Validity, 60 Stan. L. Rev. 45 (Oct. 2007).

And, then, in November 2007, TechWeb reported:

Obama promised to give the U.S. Patent and Trademark Office resources to improve patent quality and open the application process to citizen review. He proposed having the USPTO offer applicants "who know they have significant inventions the option of a rigorous and public peer review that would produce a "gold-plated" patent much less vulnerable to court challenge."

Obama, a former law professor, was recycling a shop-worn law professor argument, which rested on a misconception of the patent grant rate and further on a misconception of what the patent system is about.

***
Concerning the text in zoobab's comment And if you create an incentive to challenge patents and put some burden on the claimants, they would we much more careful in writing the claims they currently write. -->

No need to "create an incentive," it's already there; see In re Swanson on re-examination. Separately, as to "burden," note the current rejection rates at the USPTO. Obama's response is to a problem that's mostly gone, accentuated by the fact that the people giving Obama advice are not in touch with current events in the patent world, and haven't been for years. Lemley could not even accurately read Clarke's paper, and Jaffe/Lerner could not even figure out Clarke's first name, or spell Dreyfuss's last name. The magnitude of Jaffe/Lerner's mistake on Qualcomm is out-of-sight. Out-of-touch, out-of-touch, out-of-touch ...

Full post as published by IPBiz on September 05, 2008 (boomark / email).