BOSTON HERALD GOES OVERBOARD ON PATENTS: An editorial, published in Sunday's Boston Herald, claims that the US patent system is a "mess." The problem? Bad patents.

Now, I'm not going to defend some of these patents, such as Smucker's attempt at patenting a peanut butter and jelly sandwich on crustless bread with the edges crimped together (which, incidentally, was subsequently invalidated by the USPTO). Also, to the Herald's credit, they didn't blindly cite the "one-click patent," like every other article has done, as an example of a patenting system run amok. However, the editorial is overly cynical, and is almost disingenous in its analysis of current problems at the USPTO.

For one, the editorial suggests that the USPTO has somehow "rigged" the system to rubber-stamp applications in a subversive effort to collect fees from applicants:

In 1982, the U.S. Patent and Trademark Office was told to cover its costs from the fees it takes in with applications and for maintaining patents in force (now about $1 billion a year). About 10 years ago, it started coming under pressure to produce revenue for the Treasury above its own needs.

For one, the USPTO wasn't "told" to cover its costs - it was actively seeking a fee-based system (the commissioner at the time, Gerald Mossignhoff, has openly talked about this on numerous occasions). The idea was that, if the USPTO went to a fee-for-use regime, the Office could more actively control the management of patent applications, and wouldn't have to go hat-in-hand to Congress to compete with thousands of other interests seeking tax dollars. However, the subsequent "pressure" felt at the USPTO over fees was due to the fact that Congress started dipping its hand into the USPTO till and diverted hundreds of millions of dollars that applicants paid for the examination of their applications.

Also, this statement really bugged me:

Examiners are considered productive if they approve applications. A rejection produces no continuing maintenance fees.

I know of no USPTO policy that remotely encourages Examiners to allow patents simply for the sake of issuing patents. Examiners are just as "productive" if they reject all the applications they examine. For those of us that prosecute extensively before the USPTO, there is the annoying phenomenon of patent "churning" - where certain Examiners reject applications in an attempt to provoke RCE's, which the Examiners also receive counts for. Even in cases where applications are putatively in condition for allowance, a few examiners will maintain a final rejection to force the applicant to file an RCE (count 1), whereupon the Examiner subsequently issues a Notice of Allowance (count 2).

Finally this:

Harvard Business School Professor Josh Lerner testified to a House subcommittee on intellectual property that all parties have an incentive to ``invest in abusing the system,'' for inventors are ``induced to make marginal applications by the likelihood of success'' - 85 percent of 350,000 annual applications will be approved. Holders of the many marginal patents can then use them to force others to pay royalties they shouldn't have to, or even to stay out of the field.

I'm assuming here that the term "marginal" is being used as a substitute for "obvious." But obvious as compared to what? It seems that you can take just about any recently-issued patent (that was filed 3-5 years ago) and place it in front of a person skilled in that art, and they will likely tell you "oh, we've been doing that for ages! I can't believe they got a patent on that!" If one scours the Slashdot message boards, for every issued patent, there is someone claiming to have practiced the same subject matter at least 10 years before the filing date. But once you ask for documents or other similar evidence of conception or reduction to practice, the story usually changes. I don't doubt the sincerity of people (rightfully) questioning the validity of some of these patents, but I think that some people's perceptions are a tad askew with the reality surrounding some of today's issued patents.

And the 85% allowance rate? Where did that statistic come from? I've seen it as low as 60%, and as high as 90%, but there have been different methodologies for establishing allowance rates for patents per year, and most of them fall well below the 85% rate cited in the editorial. I'd be curious to see which study produced that number . . .