March 26, 2007
What is a quality patent? Is there a combination of result and application-based metrics we can use to approximately measure the quality and economic strength of a patent?
While there is a widespread perception that U.S. patent quality is a problem, the suggestions that have been proposed to address the problem focus primarily on reducing the number of “questionable” patents by statutory and USPTO rule changes. There has been little discussion of identifying objective measures for determining the quality of a patent in any absolute or comparative manner. The USPTO measures “error rate,” which is an internal USPTO efficiency metric. Everyone is quick to point to a favorite “bad” patent of dubious quality. Several people have attempted to rank the strength of patents based on data available on the face of a granted patent such as citation analysis. I do not think these are the right measures and they do not drive quality. I am calling for a new initiative to define what owners mean when they refer to a “quality” patent and to develop universal metrics for determining the quality of a patent.
Numbers of Patents
Most owners have built patent portfolios by focusing primarily on thorough harvesting of inventions. In my opinion, more patents as compared to the number obtained in a prior period does not necessarily correlate with improved research productivity, nor does the number of patents provide any guidance as to whether the patents cover new products and if so whether these patents can effectively protect the technology against competition. If we measure the number of patents we receive each year patent owners will spend more money seeking to obtain more patents than the year before. Some patent owners with significant portfolios have acknowledged their patents are not directly related to any product, but are being obtained primarily to build a war chest to defend against possible claims of infringement.
I believe a patent arms race in certain technology areas has led to tangled patent thickets and difficulties in conducting pre-commercialization infringement clearances. Patent arms races have hampered the USPTO’s ability to move towards the desired 18 month application pendency goal. The USPTO has responded by hiring and training more patent examiners and proposing new rules to ease their examination burden such as limiting an applicant’s number of patent claims and continuation applications. Other ideas such as deferring examination have also been discussed. Despite the efforts of the USPTO, however, each year substantially more time and money is spent obtaining opinions on and defending against claims of infringement of patents having unclear or ambiguous claim terminologies and questionable validity. We continue to engage in prolonged and costly Markman hearings and Federal Circuit appeals. Lack of certainty and increased litigation costs point to lower quality patents. A higher quality patent gives proper notice of what is being claimed and is not as be likely to be challenged. Wouldn’t we all be better off if fewer, higher quality patents were issued in the first instance?
I believe we can select metrics that aid in improving certainty and lowering litigation costs. How can we define patent quality and when in the patent process can this determination best be made? It is very difficult to predict at the time when an application is filed whether a patent conforming to the filed claims will cover a commercially important product or process. The real economic value of a patented invention may not be apparent until years after the application is filed, and even then it may be difficult to measure precisely.
We can examine and rate certain criteria known to the applicant and his attorney at the time of filing as constituting one aspect of whether the application and any resulting patent are of high quality. For example, did the applicant conduct a thorough prior art search before the application was filed? This can be determined by the number and type of references applied by the examiner as anticipating the claimed invention. Did the applicant identify the single closest prior art reference in the information disclosure statement as compared to the reference being first cited and applied by the USPTO examiner? Was the technical advance over the closest prior art clearly demonstrated in the application or did such a showing have to be submitted by declaration? Were the initially filed claims allowed as filed or amended during prosecution? Did the specification contain definitions of terms used in the claims? Was there internal consistency between the terms and ranges presented in the specification and those in the claims?
These are only a few possible application metrics that have a direct relevance to a quality patent. Metrics should be selected that drive quality in a positive direction. More time and energy up front will hopefully maximize active patent term life and minimize pendency, minimize file wrapper estoppel, reduce inconsistencies and adverse claim constructions, reduce cost and litigation, and maximize the likelihood that the claims will be upheld when tested. We should undertake an effort to further define and rank the best metrics that should be used either as cross technology or technology specific quality indices.
Post Grant Metrics
In addition to metrics that focus on application criteria, a patent quality index can also incorporate strategic criteria such as post grant results that connect the patent with the business objectives the patent was intended to achieve. The most important measure of the quality of a patent is whether the patent helped the patentee achieve some identified business objective. Feedback useful for developing these post grant metrics should be solicited.
Some questions that a post grant quality metric may ask are: Did the granted patent claims cover a commercial product/process? How successful has the covered product been in the marketplace? Did the patent claims that issued have a fatal flaw and not effectively preclude competitive alternatives? Have non-infringing alternative products been introduced? How many and when? Has the patent been cited by others having a competitive product? Have others with competitive products received patents? How long did it take for others to design around the patent? Did the patent covering the product withstand or fail a validity test, as by opposition or litigation? Was new art cited during the opposition or validity challenge to invalidate the patent? Were the claims construed as applicant argued or were the claims construed against patentees? No doubt there are may other post grant metrics that we should evaluate to determine whether they can be arranged into a post grant quality index.
The bottom line with quality is that you improve what you measure. We need to select measures that drive the results we want. Quality will not improve merely by eliminating bad patents. It can be improved by improving the input into the system. This effort should not be left to the USPTO -- it is also the job of patent owners to take responsibility for improving patent quality and restoring faith of the public in the patent system. Perhaps IPO can help identify the best metrics.