Changes Needed to Address U.S. Patent Regulation Shortcomings

ROBERT E. LYON is an intellectual property lawyer in Los Angeles

Harmony is expected from a barber shop quartet, but is it essential in international patent law? That question is of considerable concern to U.S. industry and to independent inventors, and the answer depends on your point of view.

For reasons that make plenty of sense, U.S. companies feel it's important that our country's patent laws be consistent with those of other countries. But small inventors--those independent souls whose incubators more often than not are their garages--are highly critical of the idea.

These individual inventors already are upset about what Congress recently did to U.S. patent laws. Now they're worried about a pending bill they feel will cause them still more anguish.

That bill, which originated in the U.S. Patent and Trademark Office, would open up patent applications to public inspection 18 months after they are filed.

Why would the patent office propose such a law? And why should it be such an issue?

Start with the fact that the U.S. patent system differs from those of most other countries. Here the patent goes to whomever can show he or she was the first to have conceived the invention and then to have tested it.

In sharp contrast, the system most widely used in the rest of the world awards a patent to whomever is the first to file an application for an invention, whether or not the idea has been tested.

In my view, the U.S. system is by far the fairer of the two types. Yet it must be conceded that there are flaws in our system. Applications can be tied up in the patent office for years, and when they finally are issued, they can become subject to expensive lawsuits.

But the biggest perceived fault of the U.S. system concerns what have become known as "submarine" patents. It's not uncommon for an inventor to file a number of amendments to a patent application as refinements and improvements are made in the invention involved. This can tie up the application in the patent office for many years.

In the meantime, a manufacturer may come up with an identical or very similar product and--unaware that someone else has applied for a patent on it--invest millions of dollars getting ready to mass produce it.

Then--surprise!--the original filer's patent is issued--or surfaces, like a submarine--and the manufacturer finds that it must pay the patent holder royalties, or worse, is slapped with an injunction prohibiting it from making the product.

Submarine patents have affected not just U.S. companies but foreign manufacturers as well. Reacting to pressure from these quarters, Congress recently made a significant change in the manner in which patents are issued.

No longer are patents valid for 17 years from the date of issuance; now they're good for 20 years from the date the application was filed. As a consequence, inventors no longer have any incentive to stretch out the application process. For every day an application lies dormant at the patent office, a day of patent protection is lost.

But this change hasn't satisfied critics of the U.S. system. Even though the average processing time for patents is 19 months, the evaluation time for some can be much longer.

Understandably, manufacturers here and abroad want to narrow this window of vulnerability. Pointing out that patent applications in Europe and Japan are published after 18 months, the critics argue that for the sake of international patent harmony, the U.S. should do the same. Presently, invention applications in the U.S. are kept secret until the patents are actually issued.

Patent and Trademark Commissioner Bruce A. Lehman believes the U.S. practices should be made to conform with those in Europe and Japan. He has been quoted as saying: "It's important so people will know what new technologies are coming down the pike."

Small inventors say this bill would give manufacturers the opportunity to make and market similar, or even identical, products before their patents are issued, leaving the patent holders no recourse other than to institute expensive litigation against the violators.

Lehman responds to that criticism by noting that his office is working to reduce the examination time for patents to 12 months. Since patents are published upon issuance, goes the argument, opening up applications after 18 months won't pose any problem to inventors.

Not only do small inventors oppose Lehman's bill, they also want redress of the injustice they feel has been done to them by the recent changes in patent terms (17 years from issuance to 20 years from filing). These critics point out that the process of obtaining a patent for some types of inventions will continue to take longer than 12 or 18 months regardless of any increased efficiency by the patent office.

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What we have here is a situation that cries out for compromise--a way to protect American manufacturers from submarine patents while safeguarding the rights of small inventors.

Congress could achieve these twin objectives by passing the bill opening up patent applications 18 months after filing, and giving inventors a choice of the type and term of protection afforded by patents--either 17 years from issuance or 20 years from filing.

As it happens, Rep. Dana Rohrabacher (R-Huntington Beach) already has introduced a bill that would offer the choice between the two terms of protection.

Both of these bills--Lehman's and Rohrabacher's--should be passed, either separately or combined. The result wouldn't satisfy everyone; no true compromise ever does. But it would give manufacturers earlier notice of what's "coming down the pike" before investing heavily to make new products. And it would benefit individual inventors by providing them maximum protection for the fruits of their labors.

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