Patent Pending... and Pending... and Pending

Most attorneys insist, however, that the quality of patents issued by the PTO is a significant problem. Keller suggests that part of the trouble may be unavoidable, resulting from the fact that, while you can’t copyright an idea (as opposed to an actual work), you can patent one. “Many patents do not relate to a product or service or methodology that is actually placed into commerce,” Keller says. “They’re just out there. Someone will patent an idea for a fishing lure that never goes into production.” But the patent becomes a potential booby trap for someone else who produces a similar lure.

From such concerns spring alarms about “patent trolls”—companies that produce no products or services but whose sole business is to buy up patents and then enforce them against other companies. But Hamlin, for one, argues that trolls are bogus bogeymen, a distraction from bigger concerns. The Supreme Court has made it clear, he says, that a patent holder is under no obligation to exploit his invention. “The Constitution and Supreme Court precedents both say that if you own the patent, you may enforce the patent, period,” Hamlin says. “Trolls make all the headlines, but they aren’t the [business world’s] major problem. The problem is that the PTO needs more resources.”

Re-Re-Reexamination

As for delays, the time it takes to examine a patent application is not the only gripe attorneys have with the PTO. The agency’s reexamination process, which is triggered when any party questions the validity of an issued patent or some of its claims, can also take significant time to complete. In patent-infringement litigation, reexamination can paralyze court proceedings.

Hamlin charges that “reexamination is used as a delaying tactic by defendants in infringement cases.” The tactic works, he says, because of the same underfunding responsible for stalled applications. He cites a current court case filed in Minnesota: “We’re representing an inventor in a small technology company. We sued a large company for infringing our client’s patent. We spent almost two years doing discovery and preparing the case for trial. The defendant filed for a summary judgment, claiming the patent was invalid. Their motion was denied. Then they filed a request for a reexamination with the PTO and [persuaded] the court to stay proceedings until the reexam was completed. That was two years ago. We still haven’t received a first office action on the reexam from the PTO.”

Wait, it gets better, he says. The number of reexaminations a party can request—or that the PTO can grant—is unlimited.

Whelan feels Hamlin’s pain, but balks at the implication that there should come a time when a patent is immune to challenge. “Even in an ideal world where nearly all patents were valid and strong, you’d still want the opportunity to knock one down if it deserves to be knocked down.”