The puzzle that is patent quality

• Author: Bruce Berman
• Position: CEO, Brody Berman Associates, New York, United States

The discussion is typically about validity, not the quality of an invention or its market value. When someone speaks of a “good” patent they could be referring to one or more characteristics: the patent’s likelihood of being upheld if enforced (litigated), the importance of the invention it excludes others from practicing; or its relative value (in terms of protecting profit margins or generating direct licensing revenue) to a particular holder at a given time.

There are, in fact, no “bad” patents: just valid and invalid ones – or those that have been issued but do not withstand scrutiny. Bad or unreliable patents get issued for a host of reasons including the lack of examination time and examiner experience; and irresponsible applicants who desire IP rights whether or not they meet the appropriate tests. Valid patents that do not read on an infringing product are another matter. They may be good, but are not very useful.

Grants are not a reliable measure of validity

A good patent can mean different things to different holders in different contexts.

The legal definition of patent quality – a valid invention right that permits the holder to sue in order to exclude an alleged infringer from practicing the invention – provides limited direction. The United States Patent and Trademark Office (USPTO) today provides an issued patent with an interim status, referred to as a presumption of validity. This is, in effect, a provisional “thumbs up”, based on a less than definitive examination. Patents that are disputed frequently require the courts to determine their validity. Today, what looks like an excellent patent upon issuance may be just the first step in an extended application process.

In practice, once a patent is disputed the presumption of validity to which it is entitled may not be easily sustained. That is when scrutiny is brought to bear on the fine points of specific claims and their construction, which patent examiners often do not have the time, experience or resources to address.

Establishing whether an issued patent is valid, or infringed, is an expensive and arduous process. Procedures such as the USPTO’s inter partes review and the European Patent Office’s opposition procedure are designed to make disproving a patent’s validity less costly, and less onerous. Neither has helped much to improve certainty.

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