POPA: Patent Reform May Hurt More Than it Helps

Last week, a letter from the Patent Office Professional Association (POPA) was circulated, expressing concerns over certain meausres of the Patent Reform Act. It is unclear as to where the letter was directed, or if the letter was an official communication by POPA. However, it *is* clear that issues of "outsourcing" and Best Mode are on the organization's mind:

Applicant Quality Submissions (AQS) – the patent reform legislation would allow the Director of the USPTO to require essentially all patent applicants to provide a search report identifying relevant patent and non-patent literature (prior art) that is relevant to the patentability of the applicant’s invention. A good idea on its surface, but the devil is in the details.

[T]here is no reason to believe that the Applicant Quality Submission will put better information in front of the examiner during prosecution than is already provided for by 37 C.F.R. § 1.56. Nor is there any reason to believe that the USPTO will provide any more time to examiners to consider this additional information.

The only real potential benefit to the Agency of the AQS is to increase efficiency by taking time away from examiners to search and have them rely upon the AQS as the search of the case. This is tantamount to outsourcing the search to the patent applicant and would contravene the protections on outsourcing set forth in 35 U.S.C. 41(d) as amended by Title VIII of H.R. 4818, the Consolidated Appropriations Act of 2005. POPA believes this would negatively impact the quality and integrity of the patent system.

USPTO Funding and Fee Setting Authority – S. 1145 would provide a permanent end to fee diversion and permit the agency to set and adjust fees through the rule-making process rather than statute.

POPA has always been in support of allowing the USPTO access to all of its fees and, since 2005, the agency has had access to them. POPA is very concerned, however, of giving the agency broad rule-making authority to set fees.

We do support allowing the agency to adjust its existing fees through the rule-making process. This will allow the agency to respond to changing economic and budgetary pressures more readily. Giving the agency the authority to set or create new fees, however, is taking away authority that POPA feels should remain with Congress. Taking the authority to set or create new fees away from Congress and giving it to the agency, would hinder the ability of the American public to have a strong voice, through Congress, in determining agency direction and actions. Further, this level of fee setting authority could allow the agency to change fees in such a way as to eliminate the outsourcing protections of 35 U.S.C. 41(d).

Best Mode Requirement – Currently, 35 U.S.C. § 112, first paragraph, requires patent applicants to disclose in their patent applications, the best mode of making and using their inventions. H.R. 1908 would prohibit using the patent applicant’s failure to disclose the best mode the applicant’s invention as a defense to invalidate a patent.

The best mode requirement of 35 U.S.C. § 112 represents the very quid pro quo of the patent system. The U.S. Patent System is based on disclosure of inventions to the American people. In exchange, the American people grant an inventor the exclusive rights to his/her invention for a limited time. To eliminate the best mode requirement from the patent law would permit applicants to gain a limited monopoly on their invention and yet not put the full disclosure of the invention into the public domain. Eliminating the best mode requirement would significantly diminish the very worth of the patent system, i.e., to disclose information to the American public.

Read POPA's letter here (link)