For decades those interested in the US patent system have been discussing “harmonizing” our IP laws. For a review of these discussions, see for example Janice M. Muller, Introduction to Patent Law (2nd Ed.) or Donald S. Chisum, “Reforming Patent Law Reform,” 4 John Marshall Review of Int. Prop. Law 336 (2005).
Initially, what “harmonizing” meant was adjusting US technology patent laws to parallel the technology patent laws of other economically developed countries by eliminating first inventor rights and granting patents to the first to apply. (In other words, eliminating interferences.) Over the years since its initial proposal, harmonizing has come to be supported by the Intellectual Property Owners Assn., the American Intellectual Property Law Assn. (AIPLA) and many large businesses. Major opposition always has come from the inventor and small business communities. Some argue that harmonization will in fact benefit these opponents – see Robert Armitage’s forward to, and former PTO Commissioner Gerald Mossinghoff’s working paper, “Small Entities and the ‘First to Invent’ Patent System” published by the Washington Legal Fdn. in 2005.
The Patent Act of 2005 proposed legislation (H.R. 2795, S. 1020) “harmonizing” patent laws by changing all sorts of US patent rights to switch from our present first to invent system to a first to file system (of course), eliminate the best mode requirement, adjust the duty of candor, provide for certain post-grant proceedings, require consideration of third party submissions of prior art, and various other things. An excellent survey of all this should start with Matt Buchanan’s “The Patent Reform Library” posted on his blog promotetheprogress.com/archives/2005/06/the_ptp_patent_1.html – the POP blog.
Why stop there, though? Why not also harmonize our various patent laws with one another? Indeed, why not harmonize all our IP laws?
US IP rights –
IP laws of national scope include the patent laws (35 USC), trademark laws (15 USC §1050 et seq.) and copyright laws (17 USC). While the requirements set forth by each to establish the IP rights they govern are different, the rights they confer are much the same. With one exception: technology patents.
Specifically, trademark rights require a federal court to evaluate the likelihood of confusion between the registered and challenged marks to establish trademark infringement. A violation of copyright rights requires a showing of copying, which in turn requires a showing of access and substantial similarity, to establish the infringement. Design patent rights require the patent holder to prove a substantial similarity between the patented ornamental design and the ornamental design of the accused product to establish infringement. Plant patents require a showing that the patented plant has been asexually propagated, sold or used to be infringed. Only technology patents require something different.
Two Approaches to Technology Patent Rights –
Early on US technology patent laws required the patent owner to establish that the accused technology was substantially the same as that set forth in the patent; the patent covered the technology “constructed and operating substantially as herein set forth and described” (eg US pat. 1,000) or “as and for the purposes set forth” (eg US pat. 100,000).
Then, in the late nineteenth century US patent laws were changed to adopt a meets and bounds definition of the invention, much like real property rights are defined. The patentee had to define (claim) in the patent the exact meets and bounds of the invention. Infringement was established by showing that the accused technology came within any part of the meets and bounds of the patent. All this is discussed in many texts; see for example Patent Litigation: Procedure and Tactics by Lester Horowitz and Ethan Horowitz.
Some countries use this meets and bounds approach to define the scope of the invention protected by the patent. Other countries, like Germany, use an inventive step, gist or heart of the invention as illuminated by the disclosure and drawings, approach to defining the invention. In other words, they define the invention’s bullseye, while US practice defines the outer boundary of the invention target.
These differing ways of defining the invention lead to radically different infringement litigation scopes, costs and uncertainties. Largely because of the money involved in both defending and asserting a patent, US companies have questioned the value of US technology patent rights. Indeed, many groups have come to assert that the US patent system is now in a state of crisis. See for example the AIPLA’s response to NSA’s report “A Patent System for the 21st Century” (this and many other relevant references are cited in the POP blog).
Design and Plant Patent Litigation –
Every year at least a few design patent cases are reported. Having litigated some myself years ago, and having talked with a few attorneys who have more recently litigated design patent rights, it appears that the average design patent litigation currently costs in the mid-six figure range. Judges seem willing to accept the PTO’s determination that the design merits a patent. The litigation therefore usually focuses on the similarity between the patented and accused designs. Defendants often assert that certain features (especially those most notable) of the patented design are well-known or are dictated by non-aesthetic considerations (eg they are functional) and must be eliminated from the substantial similarity analysis, but the extent to which judges do this is unclear. Our federal judiciary often seems to be willing to reach a seat of the pants, looks the same to me, sort of decision. And the CAFC seems to be willing to go along with such trial court evaluations if couched in the language of both an overall similarity to the ordinary observer and appropriating the ornamental novelty which distinguishes the patented design from the prior art. Read Corp. v. Portec, 970 F.2d 816 (CAFC 1992).
While I have no first hand experience, I expect plant patent litigation to be about the same in scope and cost as design patent litigation. At least the few recent decisions in this area would so indicate to me. See for example Imazio Nursery Inc. v. Dania Greenhouses, 69 F.3d 1560 (CAFC 1995).
Technology Patent Litigation -
To litigate US technology patents is an entirely different matter.
First, the patent owner must go through all sorts of pre-litigation matters. It must recheck the initial inventorship determination and re-evaluate all known prior art, including any that may have been cited in any related foreign patent application. It must review the adequacy of the US patent’s disclosure and chart the infringement of the patent’s claims by the target infringer’s technology. Many cases require a lot more than just this. See for example the Horowitz book previously cited.
If all these pre-filing efforts confirm that litigation is warranted, then after the case is filed and the defendant served, a great deal still must be done to prepare the case for trial. Among these matters are a Markman hearing to determine the meaning and scope of the patent’s claims, and discovery of the accused infringer’s technology related to the patent and knowledge of the patent being litigated. While this is going on the defendant undoubtedly is conducting its own discovery related to inventorship, disclosure adequacy, prior art, claim meaning and scope and many other things. Eventually a settlement will be reached or the case tried. Whatever the trial court decides, very likely there will be at least one cycle of appeals, and maybe more. All this can and has taken a decade or more to reach a final conclusion.
From the AIPLA’s 2005 economic survey, litigating a complex technology patent costs, on average, $4.5 million. And that’s just the average, and just through trial. This cost has been growing at about 10% per year in recent years. (For comparison, the AIPLA Survey reports that litigating a high value trademark will cost about $1.25 million through trial, and a high value copyright about $1 million.) The number of patent lawsuits grew by 80% between 1994 and 2004. Companies have reported spending 32% more on outside IP litigation counsel in 2003 than 2002, compared to a 1% increase for non-IP counsel.
No wonder, then, that many experienced patent owners now think the US patent system to be in crisis.
Harmonizing Technology Patent Laws –
What if technology patent rights were harmonized with the rights conferred by design and plant patents? What might be the result?
Specifically, what if the presence of the invention in a technology patent was defined as the technology substantially as set forth in the specification? Or, if a more focused definition were desired, what if it was set forth in a claim, or set of claims, in which first the area of technology was generally stated, then the invention was defined by a set of clauses preceded by something like “the invention being characterized by . . .” followed by a listing the distinguishing characteristics of the invention, and maybe even concluding with something like “substantially as and for the purposes set forth herein?” In other words, what if the US gave up its meets and bounds approach to invention definition for a bullseye approach?
We used to do it this way for technology inventions. We still do it this way for design patents, trademarks and copyrights. In at least these areas of IP rights we let the trial court evaluate the substantiality of the copying, if any – we let the trial judge, using equitable guidelines, decide whether or not the asserted right has been violated. The Germans and others do it this way for their technology inventions.
What might be the result of such a change? I expect a bullseye approach to defining the invention in US technology patents would considerably simplify technology patent litigation, bringing it more into line with other IP litigation for example in time, scope and cost. Competitors would focus on the invention, rather than on the meets and bounds. Judges would focus on reaching a just and equitable result in technology patent litigation, just as they now do for design patents and other IP rights. Much of the complexity of patent litigation would cease. Indeed, this simple change in invention definition could carry our patent system a long way from its present crisis mode to the harmonized, “best practices” objective of the PTO’s 21st Century Strategic Plan.
Let’s expand the discussion of “harmonizing” US patent laws to include a consideration of changing a meets and bounds style of invention definition to a characterized by (or substantially as shown and described by, for example) style of invention definition.
If it turned the presently outrageous nature of technology patent litigation into something more akin to design patent litigation, I expect many patent owners, and even many accused infringers, would welcome it. Judges might too. What do you think? (JH)