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Congress and the U.S. Supreme Court have begun addressing problems in our patent system. Now it’s our turn to help. Simply put, there are too many patents of questionable quality. According to the Phoenix Center for Advanced Legal & Economic Public Policy Studies, patents of poor quality cost the economy $4.5 billion annually. The Supreme Court and Congress have focused on problems that arise after a patent issues, in the context of enforcement. Reducing the issuance of poor-quality patents in the first place could have an even greater impact. Academia, private industry and government now need to create a set of metrics that measures patent quality. This would provide an objective tool to help inventors and patent examiners qualify ideas as deserving of patent protection. It might also accelerate patent examination, as poor-quality patents � those that are more prone to legal and administrative challenges � consume time that examiners might otherwise spend reviewing more meritorious inventions. In KSR v. Teleflex (2007), the Supreme Court made it more difficult to obtain and defend patents covering obvious inventions. There is also an experiment underway, conceived by International Business Machines Corp. (IBM) and Professor Beth Noveck of the New York Law School, that enables expert volunteers to identify prior art to the U.S. Patent and Trademark Office (PTO) before a patent issues. Patent office examiners can then make a more informed decision about a proposed invention. After less than one year of operation, the online project received 206,000 Web page views from 36,000 unique visitors in 129 countries. Nearly 1,800 visitors registered to become reviewers, and have posted 360 comments. They have cited 145 prior art references, two of which have led to patent application rejections. Filtering out weak applications IBM is now collaborating with academia to create an index to help improve patent quality. Certainly, patent indexes and methods for evaluating patents already exist. However, many have guidelines that are too impractical or theoretical. Others are of limited application � for example, to a specific industry. IBM has its own methodology for filtering out potentially weak patent applications before submission to the PTO. We need an index specifically focused on what affords a patent merit under the law. Thus, the proposed patent quality index would differentiate between “value” and “quality.” Patent value primarily measures such factors as potential marketplace adoption, licensing and the ease of discovering infringement. “Quality,” however, does not depend on factors external to the patent itself. The litmus test of quality � whether a patent has been adjudged valid or not by a court � has not yet been extensively analyzed. If we can determine the characteristics of patents that distinguish valid from invalid, an index measuring quality can be built. We are tackling this issue by working with Ronald Mann, a Columbia Law School professor and nationally recognized scholar in commercial law and electronic commerce. His scholarship includes how examination of statistical trends yields qualitative information on patent characteristics. Previous patent quality studies have examined such factors as the number of claims in the patent, the number of times a patent is cited by later patents and the number of prior references that the patent cites as background information. We propose that at least 30 more specific criteria be compiled, measured and analyzed. These criteria should include key elements of patent application preparation and examination, such as the reasons for a patent’s rejection, the type and quantity of prior art cited by the applicant and examiner and the specificity of the original filing. The index should be transparent to the public, and should not favor any stakeholder. Therefore, stewardship might be maintained through a partnership among the private sector, academia and government, and should be adaptable for worldwide use. Unlike laws, which often aren’t updated until after they are functionally obsolete, the index could easily change with advancing technology. Although inventions are not mass-produced commodities, the patent approval process itself is not unlike a sophisticated assembly line, where product defects can be traced to specific types of flaws. A patent quality index that correlates known characteristics of good and bad patents can also identify the processes that resulted in those characteristics. For example, a too-short patent application might correlate with patent invalidity, and help patent examiners identify situations where inventors have not done enough to teach their invention. The examiner’s job is made easier, and inventors will be motivated to submit fully descriptive applications. The result is that the applicant submits better applications, the examiners can do a better and more efficient job and issued patents are of higher quality. If we in the marketplace and inventor community help improve the pedigree of our patents, then the vibrancy of our intellectual property will surely be robust for years to come, and ensure that the efforts of Congress and the judiciary will have not been for naught. Marian Underweiser is intellectual property counsel at IBM.

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