Patent Practitioner Organization Supports Certain Patent Reform Measures, Rejects Others

The National Association of Patent Practitioners (NAPP) has provided its comments on the proposed patent reform legislation. NAPP is primarily made-up of patent agents, and the organization’s viewpoint is seen as an important representation of the views of individual inventors.

In its introduction, NAPP takes-on the flippant usage of the term patent troll.

Some of the rhetoric by proponents of the Patent Act of 2005 has been highly troubling and obscures the debate. . . . A “patent troll” is apparently a derogatory term used by people or entities to refer to an inventor who has the audacity to assert a patent against them. Such usage is an attempt to apply colored language, in a mindless way, to attack the entire < ?xml:namespace prefix ="" st1 />U.S. patent system. . . . To the extent that the term is used to derogate inventors who do not develop corporate structures or manufacture products, NAPP believes that inventors who merely invent but do not manufacture products – which, after all, includes most university and government researchers – do not deserve epithets or less patent protection. Finally, to the extent that the term is used to refer to people who try to enforce invalid patents, NAPP believes that there are sufficient existing disincentives against such practices.

With regards to the individual provisions, NAPP supports post-grant opposition proceedings and the proposed changes to the duty of candor procedures. However the organization also has stated quarrels with the following provisions:

First-to-File: This is a controversial issue. “Congress should not be fooled into thinking that this proposal has become less controversial or more accepted over time.” Practically, this change makes things difficult for a patent practitioner who operates with a backlog of cases. NAPP expects that the provision would decrease patent disclosure quality because practitioners will rush to file the documents. This increases the opportunity for attorney-malpractice.

Limits on Broadening Claim Scope: This “is an ill-conceived, poorly worded, and unworkable proposal. . . . NAPP strongly opposes this provision.”

Universal 18–Month Publication: NAPP is against universal publication. One problem is that it would prevent “applicants from adopting the strategy of trying to get a patent and relying on trade secret protection as a fall-back if satisfactory patent protection cannot be secured.”

Inter Partes Reexamination Estoppel: NAPP is against removal of the provision that prevents a patent challenger from first bringing (and losing) an inter partes reexamination request challenging validity, then challenging validity of the same patent again in a court proceeding. [UPDATED TO FIX CORRECTION]

Limiting Damages to Components: This would just result in claim drafting mischief.

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One thought on “Patent Practitioner Organization Supports Certain Patent Reform Measures, Rejects Others”

“A “patent troll” is apparently a derogatory term used by people or entities to refer to an inventor who has the audacity to assert a patent against them”

This is incorrect. A patent troll is someone who has obtained patents under false pretenses, by defrauding the patent office, and then asserts their “patents” against people. See below.

“Finally, to the extent that the term is used to refer to people who try to enforce invalid patents, NAPP believes that there are sufficient existing disincentives against such practices.”

What on Earth are they talking about?

There are currently no substantive disincentives beyond the filing fee. (And to some extent the financial costs of lawsuits, but most patent trolls prefer not to mess with people who will actually fight back — the patents are there to extort money from those who would rather settle.) Even if a patent is found to be wholly invalid, the patentor is never subject to criminal charges and loses nothing but his money, which he may see as a worthy “investment” on the chance that he wins the patent cases.

“NAPP believes that inventors who merely invent but do not manufacture products – which, after all, includes most university and government researchers – do not deserve epithets or less patent protection.”

This is simply wrong. Now, the inventor should not have to mass-produce or sell the product, of course. But the Patent Office used to require a working model to obtain a patent, and they still ought to; the only reason they don’t is laziness and lack of resources (it was too hard to process all those models), and you can look that up in the historical record.

Otherwise the door is open for people who *pretend* to invent something but actually have just thought of an idea; they haven’t bothered to do the actual work of constructing a model and making it work properly. Those people then wait for someone else to do the actual work and then spring their “submarine” patents on them. *These* are patent trolls.

This organization appears to be in favor of patenting anything, original or not. Their opposition to universal publication seems to imagine that someone could actually protect by trade secrets something which was too unoriginal to be patentable, which seems rather unlikely. Their “support” for post-grant review seems to be intended only as a way of preventing courts from reviewing the decisions of patent examiners.

They are clearly not on the side of small inventors, who can be seriously hurt by patent trolls. (Big companies can afford to fight buy their way out, but small inventors are generally stuck with accepting cease and desist orders, regardless of their legitimacy.) They are on their own side — all their recommendations appear to give *them* more paid work.

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