Making American intellectual property great again

Co-authored by Robert Koch, former head of the intellectual property practice group at Milbank, Tweed, Hadley & McCloy in Washington, D.C.

A deteriorating intellectual property regime in the U.S. has been quietly unfolding over the last decade and has contributed to the declining standard of living for middle class Americans, the stagnant economy, and the outsourcing of high-tech manufacturing.

The Great Recession of 2008 technically ended in June 2009, but normal recovery never got traction in the next eight years of President Obama’s two terms.

Rearranging healthcare through Obamacare, reorganizing financial service regulations through Dodd-Frank, and the EPA war on fossil fuels — affecting some 38 percent of the economy — were thought to be the chief culprits hindering economic recovery. But it turns out that during this time frame, Supreme Court rulings and congressional legislation that affected the U.S. patent system and the protection of intellectual property also contributed to diminished innovation, fewer jobs created and lower economic growth.

Two factors contributed to a troubled U.S. patent environment that prompted response by the judiciary and the legislature: 1) the high cost of patent litigation and 2) the proliferation of vague, overbroad and otherwise bad patents that were exploited by “patent trolls.”

Patent trolls typically own large numbers of patents. Their business model revolves around monetizing portfolio patents through licensing fees from alleged infringers under threat of litigation.

In 2011 Congress sought to correct these problems by passing the America Invents Act (AIA), which sought to establish a faster and cheaper alternative to litigating patent disputes in courts by creating a new patent adjudication venue inside the U.S. Patent and Trademark Office (USPTO).

It turns out, however, that this further jammed the system, adding another layer of costs and delays to patentees, who still often sought dispute remedy in the district and Federal Circuit courts, which generally require costly proceedings.

Within the same time frame there were two Supreme Court rulings on patents that negatively affected key growth areas of the U.S. economy — biotechnology and high tech.

The 2012 Mayo v. Prometheus decision specifically limited subject matter patent eligibility itself — negating patent protection in the U.S. for significant naturally occurring biotechnology inventions. The 2015 Alice Corp v. CLS Bank International decision was equally sweeping — invalidating a range of business method patents, which also undermined the concept of patent eligibility — that is whether certain inventions can be patented at all.

These decisions reduced the need to license or face costly litigation. But the rulings also put a chilling effect on others — the legitimate inventors, innovators and R&D entities — who have counted on patent protection for their own inventions since the Patent Act of 1790.

Companies big and small now ask the same question: Why invest in R&D or why license basic technology and/or improvements when the current weak patent regime brought on by Supreme Court rulings and AIA policies encourage free riding and infringement of patents?

Meanwhile China has strengthened its patent laws in recent years, and is filling the vacuum of a declining U.S. patent environment. China surpassed the U.S. in 2015, becoming the world’s top issuer of patents, granting 359,000 — some 20 percent more than the number granted in the U.S. that year.

China’s patent system treats biotechnology inventions and business method patents favorably. Enforcement of patent rights in China is also significantly cheaper than in the U.S. China will soon have the largest economy in the world, but the more important issue is whether China will become the preferred destination for inventors, innovators and R&D entities to license and seek enforcement of their patented technology.

Presently the weak U.S. patent regime allows market incumbents to infringe others’ patents — particularly those of market entrants — with little risk. They know that legal costs are sufficiently high to discourage the often undercapitalized market entrants from defending their rights. And if litigation does ensue, settlement cost in most cases is likely to be no higher than it would have been in a licensing fee arrangement.

The status quo — which favors incumbent companies and infringers at the expense of innovators and market entrants — is quite the opposite of a beneficial patent system envisioned in Article 1, Section 8 of the Constitution. Change is obviously needed.

First, resolve through legislation the serious uncertainty surrounding what is and isn’t patentable. There is no inherent reason why a business method, biological method or other application should not be patentable if it otherwise meets the “usefulness, novelty and non-obviousness” criteria of the longstanding patent statute.

Second, amend the reform started by the new review procedures of the AIA by giving the final word on claim scope and validity to the USPTO instead of the Federal Circuit. This would save time and cost by eliminating the option for a court rehearing on patent validity already established or upheld by the USPTO.

Third, reduce marginal and weak litigation threats by reinstating the presumption of patent validity and also by adopting a “looser pays legal fees” approach to lawsuits brought by trolls and patent holders against alleged infringers.

In conclusion, a strong U.S. patent regime has a vital role to play in strengthening the economy by leveling the playing field and helping market entrants and small companies compete and succeed. Making intellectual property great again should be a high priority along with tax and regulatory reform in President Trump’s domestic policy initiatives to create jobs and accelerate economic growth.