STATEMENT FOR THE RECORD by LeEarl
A. Bryant, P.E. Prepared For The U.S.
House of Representatives On
The “U.S.
PATENT AND TRADEMARK OFFICE: FEE SCHEDULE JULY
18, 2002, 10:00 A.M. Introduction The over
235,000 U.S. members of the Institute of Electrical and Electronics
Engineers, Inc. represented by IEEE-USA include inventors, innovators,
designers, independent entrepreneurs, small business owners, and employees
of firms that acquire, license and exploit intellectual property.
Their collective efforts promote our nation’s prosperity, security, and
competitiveness by fostering technological innovation. IEEE supports
the engineering process of creating, developing, integrating, sharing and
applying knowledge about electronics, information technologies and
physical sciences for the benefit of the profession and humanity. IEEE’s U.S.
members are among the most frequent users of the USPTO, and therefore we
have a compelling interest in ensuring that legal principles governing
patent policy are consistent. By virtue of the practical experience of its
members, the IEEE-USA respectfully believes that its views can assist this
committee in evaluating the effect of the strategic plan on technical
innovation, especially by independent inventors and small businesses.
We are deeply concerned about proposed changes in the patent system that
could potentially jeopardize our members’ abilities to secure the patent
protection they need, the lack of which would affect our country’s
competitiveness, economy, and technological advancements. General
Intellectual
property is a significant and growing component of our national economy.
The Information Technology (IT) sector accounts for an estimated 8.2
percent of our gross domestic product and accounts for one-quarter of the
economic growth in the American economy. This is just one of many
sectors which rely heavily on patent protection and with which many
IEEE-USA members are involved. The IEEE-USA believes that our
nation’s global competitiveness and our economy are directly tied to the
innovations made by independent inventors and inventors employed by small
businesses. The success of many startups can be traced to a
handful of inventors obtaining funding due in great part to being able to
protect their intellectual property. As such, the voice and concerns
of the independent inventor and of small business entities must be
considered at all stages of developing and implementing changes to the
patent process. The quality of
the patents issuing remains an important concern of the IEEE-USA.
We appreciate the USPTO staff’s ongoing efforts to continuously improve
the quality of their work product. We support the Strategic Plan’s
principle to improve the quality of the USPTO while reducing pendency,
such as efforts to enhance successful, appropriate pilot programs and
extend them throughout the USPTO. The IEEE-USA
understands the importance of a global patent classification system and
harmonizing our patent system with the rest of the world to gain easier
and less expensive patent protection around the world. It is
important when changing U.S. patent policies for harmonization that we
continue to encourage innovation and maintain U.S. competitiveness. We
support the Strategic Plan’s efforts to achieve this. Fees and Costs to Obtain Patent
Protection
IEEE-USA
believes that the USPTO should be fee-supported, with flexibility in
setting fees subject to the oversight of Congress and following proper
administrative procedures. The IEEE-USA has opposed and
continues to oppose diversion of fees paid to the USPTO for use by other
agencies. If all of such monies were used for the USPTO, instead of
being diverted by Congress as in the past, IEEE-USA believes no fee
increase would be necessary. Taxing patentees beyond the costs of
the USPTO yields results contrary to technical innovation in the U.S. If fees need
to be adjusted to help support the USPTO’s operation, the IEEE-USA
believes that Congress must take into account the special circumstances
presented by the independent inventor and the small business entity when
considering changes to the fees, the fee structure, and when imposing
other costs to receive patent protection. The proposed fee changes
will adversely affect individual inventors and small business entities to
a far greater percent than other businesses. Additionally, we are
very concerned that the 4-tier application option proposed would
discriminate solely on the basis of one’s wealth. The IEEE-USA
continues to support reduced fees for the independent inventor and small
business entity. We believe that all Federally mandated fees and costs to
file, examine, issue, and maintain patents must be reduced for the
independent inventor and small business entity. IEEE-USA
further believes that the functions of the USPTO that benefit the public,
such as making information available to all on the Internet, should be
funded through general tax revenues as this is a part of the
Constitutionally mandated function of the USPTO for the public good. The Number of Patent Claims
The complexity
of technology has changed dramatically since the first patent was issued,
let alone over just the last 100 years. Few claims were
required by Edison in order to obtain patent protection for the light
bulb, but today a gigabit Ethernet switch that optimizes data transfer
could not be adequately protected by just a few claims. The
complexity of many of today’s discoveries requires far greater skills,
knowledge and sophistication to delineate and claim an invention.
The U.S Supreme Court recently recognized in Festo v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., et al. that “language remains an imperfect
fit for invention.” It is therefore more and more difficult to
adequately describe today’s complex inventions and to differentiate them
from previous inventions without the use of multiple claims. Members of the
IEEE-USA will find many of their inventions cannot be adequately and
fairly claimed for a reasonable fee within the punitive limitations as set
forth in the proposal. Recent U.S. Supreme Court and lower
Federal Court cases essentially mandate the use of many diverse forms of
claims and claiming strategies. As just one example, an inventor of
even a simple software invention must use multiple independent claim
formats to adequately claim the invention. A typical claim, to have
adequate commercial coverage in the relevant marketplace, must practically
be presented as, among other forms, apparatus claims, method claims, data
structure claims, computer-readable medium claims, user interface claims,
propagated signal claims, and software-related business method claims.
Although this multiplicity of claim formats for similar subject matter
does not significantly increase the examination costs of the USPTO, the
current proposal would harshly punish, and thus practically limit, the
scope of protection available to inventors, especially to those of
moderate means. The IEEE-USA
contends that provisions that discourage inventors from adequately
protecting their inventions, such as the proposed punitive fees and a fee
structure designed to limit the number of claims, would be at odds with
the needs of entrepreneurs whose livelihood depends on patent protection
and this aspect will diminish their ability to obtain dependable
protection, much less defend it, within their budget. Outsourcing Searches
The patent examination process is an ongoing negotiation between the applicant and the examiner, often with the examiner refining and re-searching the prior art in combination with the applicant making amendments to the claim language. The IEEE-USA believes that there are both short and long-term consequences to outsourcing searches. In the short term, the IEEE-USA is concerned that financial incentives to independent inventors and small businesses will be impacted. Many independent inventors also currently prepare and file their own applications, and perform all of their own searches at the USPTO, depository libraries and elsewhere, all in an effort to save money. Searches through commercial vendors are effectively a part of the application costs and it is unlikely that legislation would place pricing controls on commercial vendors. The
IEEE-USA is also concerned that there could be long-term unexpected
consequences to outsourcing searches. There may be a discontinuity
between the search and the examination. Thus, not only might
outsourcing affect the quality of patents issuing, but it might also have
an unanticipated effect years later in the courtroom during patent
litigation where the third party’s search methods and quality are
challenged. IEEE-USA recommends that prior to final implementation
this be thoroughly investigated via preliminary studies combined with
studies of the European Patent Office's results of their outsourcing
between offices. Successful outsourcing must address these concerns
and implement reasonable checks and balances to assure adequate
protections to the inventors and the patenting process. Other
Further,
IEEE-USA supports efforts to bring the USPTO into the 21st century such as
electronic filing. We strongly believe that electronic
interactions with the USPTO (e.g. electronic filing, information
disclosures, application tracking, searches, etc.) must use open
interoperable interfaces and not use closed or proprietary interfaces.
We believe that such an open structure and interoperability will allow
market forces to generate the best and lowest cost solutions. Conclusion
The IEEE-USA
believes that some of the changes in the USPTO’s 21st Century Strategic
Plan, such as those aimed at reducing cost to the inventor through
harmonization and electronic filing, are positive and will improve the
system. However, some of the other changes could damage the process
and particularly could harm individual inventors and companies that rely
on the protection of patents to maintain competitiveness in the global
markets. The IEEE-USA believes that the USPTO should continue to
find creative ways of distributing their efforts, such as outsourcing of
searches, while taking into account the issues we raised. The IEEE-USA looks forward to assisting the USPTO and Congress in your efforts to improve the efficiency and quality of the patenting process. | Top of Page | Policy Log | Public Policy Forum | IEEE-USA | Last Update:
15 July 2002 Copyright ©
2002, The
Institute of Electrical and Electronics Engineers, Inc. |
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