A proposed agenda for the ‘new patent reform’

Last week, I wrote about the changing scope of ‘patent reform.’ Following the release of the Draft 2007-2012 Strategic Plan by the Patent and Trademark Office, it is clear that ‘patent reform’ is beginning to take on an entirely new, much broader scope than it has in the past.  The Draft Plan hints at a desire to fundamentally alter our unitary patent system in favor of a new system that offers several different ‘patent products’ and examination alternatives.

The concepts mentioned in the draft document have certainly been hinted at before (see the ‘themes’ from the 2005 National Academies/AIPLA Conference on Patent Reform, and the interesting smoke signals we’ve seen from the Senate that contemplate different treatment for different industries).  Nevertheless, the Draft Plan represents the first official signal that a shift away from a unitary patent system is being considered.

Based on the significance of this shift in scope and the Office’s current aggressive approach to implementing change via its regulatory authority, it is critical that a proper agenda for the ‘new patent reform’ be established early…and followed.

With that in mind, here’s a proposal:

First, Congress should conduct oversight hearings to evaluate the current proposed rule placing limitations on continuation and RCE practice.  The hearings should focus on defining ‘continuation abuse,’ the stated purpose behind the proposed rule, and determining whether such ‘abuse’ exists at such a level to warrant an arbitrary limit on the ability to claim inventions properly disclosed under the statute.

These hearing should also address the significant question that exists as to the authority of the Office to implement the proposed changes.  A thorough inquiry on this point is critical because reversing and/or temporarily halting a final rule, if put in place, would place heavy time and expense burdens on patent applicants and the Office alike.  Furthermore, it is clear that making the proposed continuation/RCE rule final without a higher lever of review will create a great deal of frustration amongst the patent bar and patent system stakeholders.  From the Office’s point of view, this may make it more difficult to implement significant regulatory change in the future.  If the Office truly wants to put this rule in place, it should welcome a serious inquiry into its ability to do so.

Considering the Office’s apparently short timetable for making the proposed rule final, these oversight hearings should be conducted immediately, preferably by the 109th Congress.

Second, Congress should conduct an oversight hearing evaluating the current unitary patent system and its ability to fulfil the Constitutional requirement that the system “promote the progress.”  Is the current system working for us?  Is it the best possible system?  Could we improve the current system?  Could we build a better one?

Third, if it is determined that the system needs change to fulfill the Constitutional requirement, oversight hearings should be conducted to determine what types of changes to the patent system would best move us toward fulfilling the Constitutional requirement.  Do we need only to ‘tweak’ the current unitary system?  Is the problem simply one of administrative issues within the Office?  Would proper funding levels fix the problems?  Or, are we missing the Constitutional requirement so badly that we need to build an entirely new system?  If so, would alternative patent products, such as registrations, and examination alternatives, such as requests for examination, move us closer to fulfilling that requirement?

We need to ask these questions to ensure that we don’t automatically move toward the changes being contemplated by the Office.  If indeed change is needed, and if indeed those are the best options for change, then by all means let’s move ahead.  But, we must first ask these questions to ensure that we don’t implement unnecessary and/or ineffective changes.

These hearings should be conducted by the 110th Congress.  The 109th thoroughly examined ‘patent reform’ as we knew it over the last few years.  The 110th needs to take the inquiry up a notch to examine the issue at the societal and Constitutional level.  The scope of the ‘new patent reform’ mandates this.

Fourth, the Patent and Trademark Office must provide details on the changes that it hints at in the Draft Strategic Plan.  It is clear the Office is debating significant change that extends beyond its regulatory realm.  To fully appreciate the scope of these changes and to have open and frank dialogue on the issues they present, patent system stakeholders need details on the “plan.”  The details should be provided through an official channel in which public comments can be received and catalogued.  Ideally, these details would be made available prior to Congressional oversight hearings directed at determining the effectiveness of examination alternatives and alternative patent products.

Thoughts?