Law Prof Takes Aim At 'Silly' Patents At University Of Missouri-Kansas City School Of Law Seminar
Mark Lemley, a professor at Stanford Law School, presented his case during a University of Missouri-Kansas City School of Law continuing legal education seminar. He questioned whether the U.S. Patent and Trademark Office has become a rubber stamp by granting patents to the majority of applicants. "There's a perception out there that there are lots of bad patents," Lemley said. "It's pretty easy to get a patent through the patent office. And a bunch of patents that got through the patent office shouldn't have done so." Lemley even cited a few of his favorite "silly patents." They included a patent for the method of swinging a swing sideways issued to an 8-year-old.
Another patent was for using a laser pointer as a way to exercise a cat. But Lemley's favorite patent was for hyper-light-speed antenna, which is a way to travel back in time by moving faster than the speed of light. The patent office is "basically letting through what comes before it," he said, "even those that are pretty obviously not patentable subject matter." One of the most significant problems, Lemley said, is the use of continuations. New rules limiting the number of continuations an applicant can use were to go into effect last Thursday. However, a federal judge in Virginia granted a preliminary injunction that put the changes on hold. Under the proposed changes, applicants could no longer file an unlimited number of continuation applications. Patent applicants would be limited to two continuations and one continued application. Additional continuations could be obtained only if the applicant showed appropriate evidence, which critics of the changes have said would be difficult. Lemley called changes to the continuation rule necessary in order to stop illegitimate uses. He said some applicants used continuations to delay the issuance of the patents or to keep their applications secret. Others, he added, used continuations to cover items that were discovered by a competitor after an original application was filed. "That's a use to try to cover something that you didn't actually have in your possession when you filed the application," he said. "For the continuation rules, the question to me is: How many continuations do you need to accomplish the legitimate goals?" Lemley added. "How likely is it if you're on your fourth continuation ... that you're actually needing it for those legitimate goals as opposed to wanting to wait to see what the industry does to track it or wanting to delay in order to take the industry by surprise?" But the continuation rules that Lemley advocates were put on hold last week, when a federal judge issued a preliminary injunction in a lawsuit brought by pharmaceutical giant GlaxoSmithKline. In the lawsuit filed last month, the company claimed the new rules are unconstitutional and beyond the patent office's power because they apply retroactively and failed to provide adequate notice. That decision was a victory for many patent attorneys, who decried the rules as a burden on applicants. Chris Holman, an intellectual property professor at the University of Missouri-Kansas City School of Law, said one of the issues the patent office must examine is whether the rules should apply retroactively. "Even groups like IBM and SanDisk, who are in the computer technology area that (typically supports) these patent reforms, have stepped forward and challenged the retroactive effect," he said. Though some lawyers attending Friday's forum strongly disagreed with Lemley's opinion on the changes, none challenged him. However, near the end of his presentation, Lemley was asked to explain why he is advocating for the changes. Lemley said it's about efficiency at the patent office and addressing the concerns voiced by applicants. The patent office must address the concerns of applicants, as well as further reform the continuation process, he said. "But I think the right system at the end of the day shouldn't be one in which there are unlimited bites at the apple."