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Making a better patent

Patent prosecution is taking place against a backdrop of the press claiming many patents should not have been issued, allegations that patent examiners shirk their responsibilities and the technology industry being exasperated by the Alice aftermath

It's been a tough few years for the patent system. The press has latched onto claims that patents have been issued that shouldn't have been, allegations have been leveled that patent examiners shirk their responsibilities, and the technology industry has been exasperated by the aftermath of the Alice decision. "Making a Better Patent," clearly means doing so at multiple levels, and a panel of the same name at the AIPLA Annual Meeting today will address each.

The first stop on the way to a better patent is the USPTO itself. It has not been deaf to criticism and, in response, has introduced a number of initiatives to improve its performance. "My speculation is that the public press has been slamming patents recently, saying patents have poor quality, and I think this is the administrative response to those pronouncements in the press," says Paul Kitch of Nixon Peabody.

Kitch will moderate a session today that will include a presentation by Valencia Martin-Wallace, Deputy Commissioner for Patent Quality of the USPTO, updating practitioners on what they need to know about these quality improvement initiatives. These efforts include the Post-Prosecution Pilot (P3) program, which uses a number of metrics to analyze the expediency of patent examinations from application submission to first office action. The P3 program is intended to "allow for more streamlined prosecution, and hopefully shorter timelines," says Kitch. "If patent examiners do a high quality job at the beginning, it will make everything easier for prosecutors down the road," he says.

Accusations of overly-broad patent claims have haunted patent practitioners, and, in some cases, resulted in expensive district court and Federal Circuit litigation where they've been reprimanded for this practice. But, as Kitch puts it, "attorneys have a duty to their clients to seek the broadest possible claims," in order to provide the broadest protection possible.

Bryan Wheelock, a partner at Harness Dickey & Pierce, will discuss the reasons that, in spite of some public perception, drafting broad claims is still essential for patent applicants, so long as it's done responsibly. Kitch says drafting narrow claims may protect an inventor from having his patent rejected, but ultimately, narrow claims "make it easier for people to take the inventor's ideas and invention, make slight changes and deprive the inventor and the company of the benefit of their own invention."

But making better patents isn't just about best administrative and drafting practices. Ultimately, "you only get a better patent if you get a patent, period," says Kitch. The panel's final speaker, James Hallenbeck, of Schwegman Lundberg & Woessner, will examine threats to the patent system as a whole, and how they might be addressed. "This is a sharply divided issue," says Kitch. Many arguments have been made that technologies for biopharmaceutical and software should not be patentable, "and, therefore, the better patent is one that doesn't exist at all," he says.

But doing away with patents for these technologies could do irreparable harm, not only to important areas of innovation but to the US economy as a whole, Wheelock will argue. Ten years ago, Microsoft was among the six largest companies in the country, but was joined in the top ranks by energy and financial companies. Now, five of those top six companies are software-based or related. So, "hurting the US patent system to deprive software, and the largest industries in the US, where we have a competitive edge, only hurts US companies," says Kitch.

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