Drake IP 2013: Joshua Sarnoff, “Rethinking application drafting and examination”

Liveblogged from Drake IP Roundtable 2013.

Joshua Sarnoff considers that we need a “Meta-theory” of reform in patent: this is not just about a better utilitarian calculus, but also fairness.

The Patent Office is concerned with backlog of patents. There is a tradeoff between faster processing and reduced quality decisions.

There are avenues congress, courts, and PTO are investigating to improve quality: post-grant review, fee rules, informational collection power (Starfruits) & oaths (but not mandated searching or evaluation); reduced consequences of information failure (lying); second pair of eyes review.

Quality means three things: avoiding category 1 errors, avoiding category 2 errors, and avoiding delays. There is no consideration of social value – for example, increasing quality by increasing obviousness bar. The public deserves to rely upon PTO determination through a “thorough, accurate, and timely examination of each application” (PPAC quality report).

There has been a failure by the courts. The Phillips decision is stupid. The rules do not promote clarity at all.

Conclusions:

  • What kind of ‘process’ are applicants entitled to?
  • How far back in the chain do we want to regulate conduct? (e.g. mandatory searches)
  • How much private and public costs do we want to place on ex ante processes
  • What legal rules do we want to better structure our desires for claim and application clarity?