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Intellectual Property: Average Depth 6 Inches; Go Ahead and Walk Across

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A recent report offered to me by a commercial vendor used three years of PTAB statistics to state that only 3% of all posted cases have had “all claims upheld.” (For the record, “all claims unpatentable” is only 18%).

I think the conventional wisdom is that there is some sort of wide dichotomy–either 97-3 or 82-18–between Examiner standards and PTAB standards.

How about some contrarian thoughts?

Perhaps a first reason for the difference is that the parties (because of cost) either vet patents carefully before initiating a PTAB proceeding, or must challenge a particular patent because of potential market coverage. Poorly drafted patents can be dismissed internally with a competent opinion letter for much lower cost, and patents without market leverage can be ignored.

In other words, only well-written and well-prosecuted patents covering something with important market potential tend to reach the PTAB, regardless of the various standards of obviousness or claim construction, or the performance (impliedly poor) of patent draftsman and Examiners. (“Litigators to the rescue!”)

I would like to offer, however, another theory under which the handwringing over the “validity” of contested patents does not necessarily reflect poor prosecution either on the part of a practitioner or an examiner.

Instead, this theory analogizes a PTAB (or Federal Court patent case) to a pro football game: it reflects a struggle between two opposing, highly talented teams contesting the matter in a defined arena, under a plurality of rules, influenced by some subjective human decisions, and with plenty of resources. In such circumstances, the likelihood of a shutout or a dominating win is rather small. The comparison would be to state that the NFL® has a “playoff problem” because half of the teams in a playoff game lose, including half of the teams in the Super Bowl®.

So, let’s avoid being the statistician who drowned in a lake with an average depth of 6 inches.

(Photo; Fontana Lake, NC; Copyright 2016 Phil Summa)