Private enterprise has often led the way to solving the most intractable problems patents have faced in their 500 year history.  The most critical of these problems has been how to tell if an invention was worthy of a patent or not.  Our current patent system is facing a crisis of an ever increasing backlog.  The system of "industrialized" patent examination developed in the 1800's cannot keep up with the proliferation of patentable subjects.  Private initiatives, in the form of Peer to Patent, Wiki patent, BountyQuest, Article One Partners, and our own effort, The Examiner Advocate, are actively exploring new ways to bring needed expertise into the current process.  Crises in the patent system, however, are not new.  It is instructive to look at how private initiatives worked in the past to see how we might proceed into the future.

 

The Dawn of Patent Examination

Patents have been around since the 1400's.  They were originally limited term monopolies granted by kings.  The goal was to encourage the development of new industries to strengthen the kingdom.  A king, however, is not in a position to judge the technical merits of an invention.  In early England, patents were self examined.  The inventor had to sign an oath that the invention was new.  Validity wasn't tested until a patent was litigated.  This was an expensive and uncertain process.

 

A different path was taken in France.  A private individual, Stephen Pascal, president of a regional tax court, sold his office (you could do that then), moved to Paris, and in 1632 founded a scholarly society, The Free Academy, for the promotion of discovery and the examination of inventions[1].   This society of technical experts made itself available to examine requests for patents.  Their first case in 1634 was for an alleged invention of a new way to determine the longitude (east - west position) of a ship.  The inventor, Jean-Baptiste Morin, Professor of Mathematics at the Royal College in Paris, asserted that he had perfected a method that could do this by careful measurement of the position of the moon relative to nearby stars.  The Prime Minister of France, Cardinal-Duke Richelieu, commissioned the Academy to examine these claims.  The questions he posed the Academy were:

 

1. Whether a Longitude Method was disclosed by anyone before Morin's disclosure.
2. Whether Morin really disclosed it.
3. Whether said method can be reduced to practice on land and at sea.
4. Whether by means of said method, astronomical tables of planet movements can be revised more accurately than by the combined methods heretofore employed.

In short, the prime minister, on behalf of the king, wanted to know if the invention was new, useful and not obvious.  This was the first articulation of the standards we have today.

 

The Academy held hearings and consulted outside experts.  This included no less an expert in astronomy than Galileo.  In response to their inquiries, Galileo stated:

 

"As to Morin's book on the method of finding longitude by means of the moon's motion, I say freely that I conceive this idea to be as accurate in theory, as fallacious and impossible to practice."[2]

 

The invention was not practical.  Morin had not described how to overcome the practical difficulties in making the ultra fine measurements necessary for it to work.  Consequently, a patent was denied.

 

Fast Forward to the Present

The French Academy continued to serve as the technical patent examining body in France until 1791.  Thomas Jefferson was a patent agent in Paris at about that time.  The initial patent examination procedure adopted in the US was based on the French model.  For a while, the US did away with patent examination, but that did not work well. 

 

In 1836 the modern patent examination system was put in place.  For the first time, civil servants were employed in examination and patents were organized into classes to facilitate prior art searching.  (Exhibit 1)  This system has since been copied throughout the world and has served us well until the current crisis.

 

Private initiatives are now once again exploring fundamental improvements in the patent examination process.  Bounties, social networks, wiki formats, and independent experts are all being evaluated.  It is here that we expect to see true innovation and the origins of a fundamentally improved patent system.

 

The bottom line is that efficient patent examination that results in viable patents on real inventions has always required the input of experts.  The innovation claimed by a patent applicant must be understood in order to be properly evaluated by an examiner.  The basic determinations made are: is it new; is it useful (i.e. does it actually work); and is it not obvious (i.e. is it really innovative).  Today, in particular, almost everything would seem new, useful, and not obvious to a non-expert in the subject matter area of a claimed invention.   Therefore, experts and expertise will play a very important role in evaluating innovation.  

 

It is quite clear that the esoteric nature of invention today severely taxes the abilities of modern patent examiners who cannot possibly be expert in every new facet of all of the new scientific and business fields that are emerging.  It is much more efficient to get experts involved on an as needed basis during the examination process to help insure that only respected high value patents ultimately issue.