PublishedOctober 16, 2018

The PTO’s Inability To Reject An Application For Good Has A Long History

I was recently alerted[1.  My thanks to Karen Barzilay, who located this text as part of ongoing efforts by the Adams Papers Editorial Project at the Massachusetts Historical Society to put a searchable version of JQA’s diary online and available to all.  Further details can be found here: https://www.masshist.org/publications/jqadiaries/index.php. ] to an entry in John Q. Adams’ diary, pertaining to patents in the early days of the United States.  The entry, from Dec. 27, 1804, reads:

“Next I called at Dr. [William] Thornton’s Office, acting under the Secretary of State as Commissioner of Patents; to speak with him regarding the application of a JW: Jacob Walsh, from whom I received some days since a letter, requesting my attention to this business.  Dr. Thornton had got the patent nearly made out, but told me he thought it was not a new invention. Which indeed he says is the case of almost all of the applications for patents – and others are for things impossible – In the present state of the Law, a Patent cannot be refused to any person who takes the oath and pays his thirty dollars.  The Doctor [Thornton] told me of many egregious impositions on the public under this system.  One particularly by a clergyman of Bordentown, New Jersey, named Burgess Allison, who has a patent for improving spirits by filtration through charcoal, which had been known and practiced for many years.”

Setting aside the apparent fact that the vast majority of patents back then were on old ideas—a problem that continues to exist, given the significant number of invalid patents issued by the PTO—there’s another lesson to be had from this diary entry.

Dr. Thornton was operating under the registration system, during which patents were not examined but were simply granted.  As Adams emphasized, the problem of an inability to refuse a patent leads to the existence of patents on old technology, imposing significant harms on the public who become unable to utilize the prior technology that they should have had the right to employ.[1.  I suspect that one reason that Burgess Allison’s patent was considered particularly egregious was because it was related to alcohol. As Lin-Manuel Miranda had Thomas Jefferson put it in Cabinet Battle #1—“imagine what gon’ happen when you try to tax our whiskey.”  (Ironically, Jefferson would later try to buy a patented spinning wheel from Allison—the two were apparently acquainted.)]

While the PTO no longer operates under a registration system, that situation still exists today.  The PTO—unlike many other patent offices around the world—is unable to permanently refuse a patent application.  All they can do is temporarily reject it and wait for the applicant to decide if they want to keep going with prosecution.  Unsurprisingly, in a system where it’s impossible to permanently get rid of an application, a large number of them eventually become patents.  When correcting for procedures like continuations, the percentage of patent applications that are issued has risen, approaching nearly 100% last year—a proportion not reached since the turn of the millennium.

USPTO Allowance Rates

Of course, the patents issued around the turn of the millennium are widely understood to include hundreds of thousands of low-quality patents.  As I wrote in an op-ed in IP Law 360 yesterday, that’s a situation we’re still feeling the impacts of, and one which ultimately led Congress to create the IPR and CBM programs.  

It’s unfortunate that the PTO and policymakers continue to fail to learn from these mistakes—particularly when the first Commissioner for Patents identified the issue over 200 years ago.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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