The patent application examination requirement is statutory based rather than a Constitutional requirement. Since the passage of the Leahy–Smith America Invents Act (AIA), the number of new patent applications filed each year has exceeded 500,000, while the Patent Trial and Appeal Board (PTAB) is reversing Patent Office Examiners’ approvals at a staggeringly high rate. The Patent Office’s modus operandi is to examine every patent application—even if the invention is not likely to contribute to society—with no way to allocate its resources to focus on inventions that are important.
In “The Presumption of Validity Is Dead; Long Live the Presumption of Validity?,” Manatt proposes that ex parte examinations be performed or required only after the patent applicant provides notice that it intends to enforce the patent application when issued. This white paper also discusses how the Patent Office can effectively examine patent applications/inventions and looks at several advantages that this procedural change in the timing of Patent Office ex parte examinations would have.
To download the full paper, click here.