The primary criterion for granting the limited patent should be novelty. People should not receive protection for things that are already available to the public. The novelty-only criterion also avoids the problems associated with trying to prove or disprove that something is "obvious" in light of the prior art. Regular patent protection requires that the invention be different from past inventions in a way that would not have been obvious to a person with ordinary skills in the art of the invention. Often, though, because of the limited resources available for an examination determining that difference, this criterion is more a goal than a reality.
For the limited patent, demonstrating nonobviousness would not be required, with one caveat: simply implementing an existing process or method on a computer or storing it on some new medium would not result in a novel invention, unless there is something special in how the computer is being used or the information is being stored.
In fact, no examination--beyond a check to see that the minimum filing requirements are met--would be performed before issuing a registration number, which the patent owner would be required to use alongside the invention to gain protection. Because there would be no official determination of novelty, there would be no presumption of validity for the limited patent. Anyone who pays an examination fee and submits prior art showing the protected item is not novel could challenge the limited patent.
Should the patent owner try to sue an alleged infringer, an examination for novelty would be the initial step in any litigation. At the time of the filing of a lawsuit, the proceeding would be stayed pending the patent office's examination. That exam would take less time than a regular patent examination, because obviousness would not be considered. In addition, the alleged violator of the protection would be able to provide prior art for the examiner to consider, evidence that would substantially reduce the cost and duration of litigation, particularly when there is evidence that protection should not be granted because the technology isn't novel.
Because the goal is to prevent knockoffs, it would protect against these who were aware of technology in the market. Showing that the technology had been independently created before the patentee's first commercial use would be an absolute defense. But it would be a personal defense; the patent would still be valid against others who cannot show substantial development of their products prior to the patented product's introduction.
Although such limited patent protection is clearly beneficial in its own right, it would also provide the opportunity to raise the bar for getting a regular patent. Better patent examination will require a substantial increase in fees to pay for the greater time spent by an examiner searching prior art and reviewing the application.
Once, software developers didn't file applications on their advances, because they didn't believe that patent protection was available, resulting in a gap in the prior art collection. We are still paying for that gap in terms of patents being issued on old techniques, and we cannot afford to have that happen again.
Reducing the filing fee for the limited patent would encourage filings, building the patent prior art collection. At the same time, a substantial increase in regular patent fees would pay for a dramatic improvement in examination quality, perhaps even permitting the examination of all applications by a team of examiners, instead of just one. Such a fee increase also could reduce the workload on the patent office, since many inventors might opt for the lower-cost, and immediate, protection of the limited patent and not go for a full patent at all.
Stretching copyright to provide an alternative to patents for fast-moving technologies such as computer software is not the solution, as we learned in a number of much-criticized cases before software patents became common. Congress instead should create a new, limited protection that protects against knockoffs without overreaching.
About the Author
IEEE Senior Member Lee A. Hollaar is a professor in the School of Computing at the University of Utah, Salt Lake City, where he teaches networking and computer and intellectual property law. He is a registered patent agent and is the former chair of IEEE-USA's Intellectual Property Committee.