Editor’s note: José Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.

RESEARCH TRIANGLE PARK — For some time now, critics have argued that the U.S. patent system is broken and that steps need to be taken to fix its myriad problems. The complaints are many and cover a number of areas.

One area of specific complaint arises as a result of patents issued for software and for business methods. In response to extensive public criticism, several years ago the U.S. Patent Office generated a series of internal guidelines as a way of reducing the number of business method and software patents issued. These guidelines, which in some cases are contrary to established law, left a patent applicant whose patent was denied little choice but to pursue an appeal through the court system. Using the courts to obtain the patent, however, is expensive and, as a result of financial constraints, many prospective patentees were shut out of the process.

At the same time the U.S. Patent Office was being criticized for being too tough in issuing patents on business methods and software, it was also being criticized by others for allowing the issuance of too many meaningless business method and software patents. Since both business method patents and software patents are a relatively recent phenomenon, i.e., extensive patenting in these areas occurred in the last 10 to 20 years, the problem is that the prior art collection available to examiners for searching is limited. Thus, instead of being able to search patent collections as in other art units, the examiner’s main source of prior art is traditional publications. Since the system is focused on prior art patent searching, search efforts in the business methods and software arts of necessity often fall short.

In an effort to limit the numbers of patents issued, and in an alleged effort to improve quality, the U.S. Patent Office recently proposed a number of rule changes that would place significant additional burdens on patent applicants. Among the proposed restrictions were a limitation on the number of claims initially examined and a limitation on the number of times a patent could be refiled without having to make a statement on the record explaining why newly presented evidence or claims had not been previously presented for consideration. The problem with the proposal is that while it reduces pendency time, it does nothing to address quality and instead only shifts the work burden from examiners to applicants.

In addition to the public criticism of the U.S. patent system and the draconian changes proposed by the U.S. Patent Office, representatives of patent examiner organizations in Europe and North America have added their comments. More specifically, in a joint letter to leaders of different governmental patent offices, the examiners warned that without serious corrective action, meaningful and appropriate intellectual property protection worldwide may become history.

These examiners pointed out that pressure to produce and ways of allocating work have reduced the ability to provide quality examination. As a result, the examiners believe an increasing number of poor-quality patents will issue, becoming a hindrance to and not a stimulus of innovation and economic growth.

The letter suggested steps that, if taken, will relieve the decline in patent quality. Some of the steps suggested are obvious and include: 1) provide more search and examination time; 2) guarantee the independence of the examination process, governed solely by the legal framework; and 3) eliminate rating or incentive systems to reduce bias in the grant decision. Other suggestions such as elimination of adversarial relations between patent office staff and management and providing updated search and examination tools are not as obvious.

Thus, not only is there an outcry from the public about patent systems worldwide, but now those who know best, the examiners, have joined to address the crisis before it goes too far. Whether such calls for action will result in reform remains to be seen.

A. José Cortina is a registered patent attorney with the law firm of Daniels, Daniels & Verdonik, P.A. He focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies.