The Crisis in the American Patent System
Part I
This first section is part of a multi-part paper addressing the challenges presented by the American patent system. The first part is historical. The second part, to follow, addresses proposals pending before Congress in 2009 to improve the operation of the American patent law in the 21st century. A further part will provide a comparative analysis of the experience of Europe and Canada with the principles of “absolute novelty”, more precisely “absolute world novelty”, adopted in those jurisdictions in 1978 and 1989 respectively.
The Patent Crisis of the 1830s1
In the 1830s, the United States was undergoing a patent crisis. It is not the same patent crisis that it faces today, but something can be learned from what occurred in those most interesting years.
The Patent Act of 1790
On April 10, 1790, President Washington signed the first patent statute into law. The first patent statute did not create a Patent Office. It directed applicants to file a petition for a patent with the Secretary of State. Then the Secretary of State, the Secretary of War, and the Attorney General were to determine if they, or any two of them, thought “the invention or discovery sufficiently useful and important” to merit a patent.
The first officers given this duty were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph. They called themselves collectively the “Commissioners for the Promotion of Useful Arts,” or the “Board of Arts,” although others called them the Patent Commission or Patent Board.
The Patent Act of 1790 did not satisfy applicants, and it did not satisfy those who were appointed to administer it. Applicants did not like the strictness with which the Patent Board determined who should and who should not receive patents. There was no appeal from the discretion of the Patent Board. The members of the Patent Board had high positions in the Government and did not have sufficient time to spare to run the patent system. Thomas Jefferson wrote a letter years later in 1813, stating that the investigations of patent applications had required more time than the members of the Patent Board could spare from their higher duties and that the applications had required a great deal of time to understand and treat with justice.
In a 1792 letter to Dr. Hugh Williamson, the chairman of a congressional committee to revise the patent law, Jefferson wrote that it distressed him to render crude and uninformed opinions on valuable and important rights without being able to devote the full attention that the petitions deserved. He drafted a bill to reform the patent law on December 1, 1791, and discussed it with Dr. Williamson. Mr. Jefferson’s bill would have eliminated all examination and made the Secretary of State the registrar of patents, with determinations of patent validity to be made by the courts.
While Mr. Jefferson’s bill as written was not introduced into Congress, some of its provisions were incorporated into a bill that was passed as the Act of February 21, 1793. It is likely that the primary reason for the Act of 1793 was not the dissatisfaction of inventors but was the inability of the Patent Board to administer the Act of 1790 while carrying out their other duties. Read the rest of this entry »
The Role of Patents in Focused Innovation
Throughout my career as a professional engineer working as a patent attorney I have repeatedly been trying to appeciate why people do not understand what patents are all about. Almost invariably, everyone who has approached me to discuss patenting has arrived with preconceived notions about the subject. I have spent a large part of my career trying to reorient those notions.
In parallel, I have come to recognize that there is a need to articulate the process by which innovators can focus on the most appropriate technology or opportunity for them to pursue. In respect of the patenting aspect, this requires an understanding of the benefits that a patent can deliver, and its limitations. It also requires an understanding of the essence of an inventive advance. This last requirement is closely related to the field of engineering.
A core concept is as follows:
The object in patenting is not simply to obtain a patent on your own product. For a patent to be of commercial value, it should extend to and cover close alternatives that could compete with your own product. This actually requires an inventor to think about how the benefits of an invention could be achieved in other ways.
An inventor seeking to obtain a valuable and effective patent should engage in “super inventing”. This means going beyond thinking of the original invention in terms of its specifics. Every invention starts-off as an assembly of parts and processes. Instead, the invention has to be understood at its most abstract level. This will help greatly in identifying alternate variations on the original invention. The objective, for patent purposes, is to characterize the larger inventive concept in language that will encompass all of these variants.
Surprisingly, to many, most inventions change over time as inventors come to understand the invention at a deeper, or higher, level. Once alternate variations of an original invention have been identified it will often be recognized that the original invention had its own deficiencies. A modified invention can then be identified that is superior to the original concept. This process can be carried-out iteratively, with the potential for great profit. Not only can the invention be improved, but the prospects for obtaining an effective patent monopoly can be enhanced.
Many examples can be generated where this principle is demonstrated. One example that may surprise people is that of the Wright Brothers patent, granted just over 100 years ago. This patent as originally drafted was deficient in respect of the feature identified as the principle inventive advance. The Wright Brothers did not really understand their own invention.
It is the responsibility of every patent applicant to not only describe their invention in terms of how to build it, but also to define it. The Wright Brothers knew that they had not invented the idea of an airplane that would fly under power. Such a concept had been thoroughly discussed in the previous 40 years and a considerable number of attempts to build a flying vehicle had been made. Steam powered model aircraft had already flown distances on the order of half a mile. Patents are not granted for doing something for the first time; they are granted for originating the idea of how something should be done, that is, coming up with a new idea. The idea of flying was old. To obtain a patent, the Wright Brothers had to conceive of something that had not been proposed before.
The Wright Brothers believed that they had invented the idea of controlling an aircraft so that it would bank to the left or bank to the right - to achieve “roll” - by twisting the tips of the wings. They built a glider aircraft with “soft” outer wing ends that could be warped. But when this didn’t work very well they ran a rope to the tail to correct a steering problem by “slaving” the tail to turn in conjunction with the wing tips. That’s what they thought was the essence of their invention when they filed their patent application.
Once they had filed a patent application they visited the Examiner at the Patent Office in Washington. He recommended to them that they engage a patent attorney. Returning home, they located and met with a patent attorney who appreciated the importance of what they had accomplished. By then they had made their first successful flight under power using their new control system.
Eventually, this patent attorney was able to re-characterize the features that constituted the essence of the real advance that had been achieved, and amended the patent accordingly. Even then, once the patent was issued, the Wright Brothers were faced with “infringers”, including in particular Glenn Curtiss, who built aircraft with rigid wings and small, secondary, “ailerons” to control roll.
The story of the litigation that followed provides further valuable insight into the patent universe.
If you think you understand this principle then you can test it out yourself by making a list of all of the features which characterize a scrollbar on a computer screen. How many can you identify? Are you able, in one sentence, to provide defining language which will cover all of these features? If so, you are well-qualified to understand the fundamental nature and challenge faced by inventors when they set out to originally conceive and eventually patent their inventions.
More significantly, you will be well-positioned to engage in “Directed Innovation” which means conceiving inventions which have an improved prospect of being profitable.