The day started with a paper that seems to be just at the right point between theory and practice. It addresses the commonplace use of dual patent defenses, the primary one denying that infringement occurred and the secondary one alleging the invalidity of the patent itself. On the practical side, these dual defenses often work in conflict with each other. To show noninfringement, it is typically advantageous to have the patent construed narrowly — the less it covers the less likely that infringement occurred. At the same time, to show invalidity, it is often necessary to get the patent to be construed broadly — the more it covers the more likely it is that another earlier patent claims the same thing. The paper does a great job of summarizing the law, but it also demonstrates how an attorney who is litigating a case can make better decisions about how to assert these somewhat inconsistent defenses. The paper, Patent Invalidity Versus NonInfringement, by Roger Ford, will be published in the Cornell Law Review.
Another paper of note is one that throws empirical reality at the patent system and challenges a lot of the oft-stated problems within the patent system. John Golden of the Univ. of Texas examined data about the patent system use over time. Fundamentally, he showed that the “crisis” caused by a rising number of patent applications may not, in fact, exist. He has asked that quotes not be made of his early draft, but the basic finding is that patent filing growth now is not historically unique and much of it seems attached to international filings. The primary area of exceedingly high growth that he found was in the number of patent examiners, a growth that far exceeded the growth in the number of patents. There are significantly more examiners now per patent application than there have ever been. The few commentators out there who have been arguing that the basic problem with the patent office is mismanagement rather than resources may soon have another arrow in their quiver.
The conference experience will be different this afternoon as I shift sides of the hall as a commentator on another’s paper. I have found the process of attempting to summarize another’s preliminary work product into a five to ten minute synopsis to be highly challenging. Most of the participants at the conference will have read the draft, so more than a summary is necessary. Criticism is appropriate, but it must be crafted carefully so that it will be helpful to the author. The model I ultimately used for the task was the model of discussion in a seminar of trying to raise questions for thought without stating that the author is just wrong. The next paragraph will address how well it went.
The results: It would have been a lot different (and correspondingly better) had the author and I had a better opportunity to work together before the conference. As the commentator, I had to base the issues raised predominantly on where I saw areas that could be more strongly presented. Unfortunately, this doesn’t mean that the author feels the need to address the issues raised; indeed, the author could be worried about completely different topics. At a work-in-progress conference, supporting the author is the point, and this time, my pencil wasn’t as sharp as it could have been.