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Better metrics may be key to patent system improvements

A sharp increase in patent litigation in the US, while an eye-catching stat for those worried about frivolous litigation, may not be a sign that the system in broken

Q Todd Dickinson
Photo courtesy of IPOS

Q Todd Dickinson (left), former head of the AIPLA, says that though the rise in patent litigation in the United States is often cited as a sign that the system requires substantial reform, litigation is in fact an important part of maintaining the integrity of the system.

“Litigation is one of the ways that value is determined,” he explains. “It’s one of the ways that the strength of the patent is tested, and to the extent that it is done in an efficient way, this can be a potentially positive factor at the end of the whole process.”

Even this increase in litigation, he suggests, may be more noise than signal, pointing out that several studies show that the much-talked about rise in litigation has risen “nearly lockstep” along with the rise in patent filings.

Dickinson, who also previously served as commissioner of the USPTO, made his remarks earlier this week at IP Week@SG hosted by the Intellectual Property Office of Singapore (IPOS). He appeared on a panel along with Francis Gurry, director general of WIPO, Hitoshi Ito, commissioner of the JPO and Brian Hinman, chief IP officer of Royal Philips.

Dickinson says that the “backlash against IP” was sparked in part by non-practising entities, though not necessarily by traditional aggregators such as Intellectual Ventures. Instead, it was the rise of entities indiscriminately sending letters to small businesses and non-profits demanding relatively small amounts, regardless of whether the target actually infringed the patent.

Though efforts to reform the patent system have taken on a myriad of forms such as fee-shifting and requiring greater specificity in pleadings, he suggests that the one of the most effective ways to deal with these entities and other perceived shortcomings in the patent system is to increase and maintain patent quality.

Hinman similarly cites increased patent quality as one of the most important changes he would like to see.

“I know that there are a lot of different issues for the patent office to try and address and this is such a challenge, but I think once patent quality is solved, then some of these other problems may go away, or at least be easier to solve,” he says.

Measuring the problem

Though the speakers point out that improving patent quality cannot be solved by merely addressing one aspect and requires a holistic approach, they cite the development of better metrics to more accurately assess the issue as an important step. Gurry for example points out that looking at how often courts are overturning patents is one sort of indicator of the quality of patents being granted. Dickinson made a similar observation, pointing out that the USTPO under David Kappos had a programme where senior examiners internally re-examine a random sample of patents to assess how closely the patents conform to statute. Using these approaches can help gauge the performance of the patent office and even individual examiners as well as reveal where the problem areas are.

Similarly, Hinman points out that private companies can develop similar tools to assess the quality of their patents in terms of their worth to the business. In fact, he says that Philips already does this, using models to try to determine the value from something such as increased profits generated by a patent.

“It’s important because I can give this [analysis] to my CEO and it’s a large part of how we advise the company of the value of our patents,” he explains.

IP Week@SG took place August 26 - 27 in Singapore.

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