Past as Prologue for Patent Reform: Experience in Japan with Oppositions Suggests an Alternative Approach for the U. S.

March 16, 2006 Published Work
Journal of the Patent & Trademark Office Society, February 2006, Volume 88, No. 2, pages 101 - 123

The U.S. patent laws help fuel technological progress by awarding to an inventor a limited monopoly to exclude others from making, using and selling the invention in exchange for his or her disclosure of the invention to the public. This in turn, encourages others to learn from, and improve upon, the inventions of others to further incentivize innovation and patenting activity. The U.S. Patent and Trademark Office (herein "PTO") has come under increasing attack for issuing patents that are allegedly overly broad or simplistic and of questionable validity. This attack implicates a number of constraints imposed upon the PTO due to resource limitations that prohibit the accurate determination of the scope of information in the public domain that is usable as prior art. For example, PTO examiners are faced with time limitations in searching the prior art and examining a patent application against it. An examiner typically spends from about eight to about thirty-two hours searching and examining a patent application during the average two to three year prosecution period. In contrast, patent attorneys, search experts and technical experts seeking to invalidate a patent may send hundreds, or even thousands, of hours searching for and reviewing prior art to undercover and synthesize invalidity arguments.