Our resident sage Lloyd McAulay, a patent attorney and political activist, comments on the patent trolling controversy:   Much concern has been expressed by studies showing that over half the patent litigation is brought by non practicing entities (NPE).  They are called trolls if you don’t like them.  Some, perhaps most, of recent doctrinal “refinements” by the Courts seem to be informed by a concern with the abuse of NPE litigation.

Much patenting is to protect a company’s financial investment in developing, testing and marketing new technology.  Few would dispute the value of such. Patents that give exclusivity to  a company encourages investment in research, development and marketing.

A significant amount of patenting is by research individuals and other entities (often university based) for the purpose of developing new technology for license or sale to others.  Few would dispute the value of such.  Let us call them “non practicing inventive entities” (NPIE)

What raises concern is the use of patents by NPEs that are not NPIEs in contexts.  There are too many cases where a patent owned by a NPE inhibits further improvement.  Such patents often  represent a low level of investment development in which a smart guy lays out a novel approach in a computer assisted method of doing business.  Often the patent gets a scope of claim protection  beyond what is taught and contributed.  That is, if there is any invention at all, the claim scope goes too far.  In such cases, the award of patent coverage inhibits further development by an amount that is not worth the value to society of the invention on which the patent is based .

Ideally, the courts should look to what patent exclusivity is  necessary, or even useful, to encourage the investment required to develop, test and market the invention.  As a practical matter that is too demanding in time and cost to warrant such an inquiry.   We basically have doctrines which can be used for that economic evaluating purpose.  They need to be used with that purpose in mind.

I suggest that in considering (a)  claim scope (validity and infringement), (b) infringement damages and (c) appropriateness of an injunction, the following factors be part of what is  considered.  Many of the following have at times been termed secondary factors of non-obviousness.  They are all relevant to the purpose of encouraging  investment:

1. Whether or not the product has been marketed by the patent owner or licensee
2. Whether or not there has been industry or professional recognition of the invention.
3. The amount spent to develop, test and market the invention.
4. Determining whether or not the invention would have been developed and marketed without the lure of patent exclusivity.
5. Whether or not others have licensed the patent
6. The dollar amount of product sold that incorporates the patent.
7. The degree to which the alleged infringer has copied the invention; either by copying the teachings in the patent or by copying the product manufactured by the patent owner.
8. The importance of the problem addressed by the inventor
9. The length of time that the problem addressed has been recognized as a problem.
10. The extent to which the invention employs or requires new technology.