Fighting City Hall

You may have missed it, but something remarkable happened last month: The United States Patent and Trademark Office was on the losing end of a U.S. District Court decision.

Yes, someone sued the government—and won. The result, in Tafas v. Dudas, is extraordinary for a number of reasons.

First, it is noteworthy from the perspective of the players involved. A private citizen sued the executive branch of the federal government (represented by the Patent Office) to stop the implementation of a number of new rules that would dramatically change patent examination practice. The judicial branch of the federal government (represented by the district court) ordered the executive branch not to implement the planned rules. The Founding Fathers' system of “checks and balances” worked!

The larger question is, What does this mean?

Most of the companies who commented on the proposed rules agreed they were a bad idea. You may be thinking, “What do I care, now that they are history because of the court's ruling?” Well, it's likely that some of the proposed rules will return, so you may want to consider some of the changes as possibly still on the horizon.

Most significantly, the proposed rules generally called for limiting the number of patent applications a party could file based on an invention, and limiting the number of claims that could be filed in any single patent application. Currently, there are no limits on either, as long as the applicant is willing to pay the fees charged by the Patent Office. The Patent Office justified the rule changes on the ground that the number and complexity of applications has increased dramatically and is supposedly crippling the office. An important fact to keep in mind is: your tax dollars do not pay for Patent Office operations; it's a self-funded organization, operated on the fees collected from patent applicants. In fact, it typically runs a surplus, with excess funds often designated for unrelated federal government programs.

The obvious solution to the Patent Office's problem of being overworked is to hire more examiners, and to charge more or higher fees to pay for it. Wouldn't you ramp up staffing if business was so good that demand from your customers outstripped your ability to supply your product? Instead, though, the Patent Office opted to reduce its workload by limiting the ability of inventors to apply for patents. In response, the court told the Patent Office that it did not have the authority to make such rule changes.

Stay tuned, because more rule changes are bound to come. But this time, at least, the “good guys” beat “City Hall.”