often viewed by investors and consumers as the imprimatur of the U.S. government.265 Although the USPTO is not in the business of policing fraud, if it can reduce the possibility of fraud with little increased cost, then it should do so.266
The case studies in this Comment suggest that the appeals process generally produces the correct result when patent lawyers and judges devote their full attention to the problem.267 Unfortunately, the USPTO did not reject most of the patents criticized in this Comment.268 In addition, there is anecdotal evidence that applicants find more success rewriting and resubmitting applications than in pursuing patent appeals.269 The USPTO appears to devote more resources to defending a rejection than to deciding to make a rejection in the first place.270 Certainly, if the same level of technological and legal expertise were devoted to every patent application as the USPTO devotes to the appeals process, inoperable patents would be reduced to a minimum. The cost of such a program would be prohibitive, of course, so the challenge is to find solutions that would place as little strain as possible on the USPTO’s already overburdened resources.271
A. Suggested Changes in the Law of Utility
Currently, case law forbids the issuance of patents to completely inoperable inventions.272 Unfortunately, the burden is upon the examiner to mount a prima facie case of inoperability, even when the nature of the claims suggests that the invention operates on pseudoscientific principles.273 Examiners are naturally reluctant to devote the resources necessary to make a prima facie case, particularly when a typical examiner only devotes an average of less than twenty hours to each application.274 It would be unreasonable to expect, for
See MERGES & DUFFY, supra note 26, at 216.
See supra Parts IV.C-D.
See supra notes 20-24 and accompanying text.
See Voss, supra note 18, at 1252-53 (noting that a company managed to
get a once-rejected cold fusion patent issued by carefully redrafting the patent to bypass nuclear science examiners in favor of electrochemical examiners).
Carl Shapiro, Patent System Reform: Economic Analysis and Critique, 19
BERKELEY TECH. L.J. 1017 (2004).
271. USPTO: A
See Mandy Barbara Seuffert, Comment, Soft-Science Examiners at the Non-Obvious Solution to Reduce Erroneous Patent Grants, 10 MARQ.
INTELL. PROP. L. REV. 111, almost doubled since 1984).
In re Harwood, 390 F.2d 985, 989 (C.C.P.A. 1968).
See In re Gaubert, 524 F.2d 973, 977 (C.C.P.A. 1967).
Shapiro, supra note 271, at 1027.