When the Framers of the United States Constitution granted Congress the authority to create a patent system, they certainty did not envision a patent as an a priori entitlement. As it stands now, anyone who files a patent application on anything is entitled to a presumption of patentability. A patent examiner who seeks to challenge patentability faces the dual burden of building a prima facie case of unpatentability and carrying the ultimate burden of proof. Thus, from the outset, an applicant is in a very good position; but the examiner’s limited resources, time pressures, and production goals tip the scales even further toward patent issuance. This entitlement regime increases the number of patent application filings on questionable inventions, contributes to the proliferation of low-quality patents, impedes patent reform, hinders innovation, and frustrates patent policy. Yet these problems are often attributed to other causes and the potential role of the presumption and proof framework has largely been overlooked. But can it be fixed?
This Article proposes a way to rebalance the scales of patentability during patent examination. By demanding more from the applicant, it makes the issuance of a patent far from a sure thing. The proposed regime makes three key changes in the rules of patent examination. First, the locution of the dual burdens would be decoupled such that the initial burden of coming forward with evidence of unpatentability (building a prima facie case) would remain with the examiner but the burden of persuasion on the ultimate issue would now rest with the applicant. Second, the current presumption of patentability would be replaced with a presumption of unpatentability. As a result, an applicant who could not adduce proof of patentability by a preponderance of the evidence would face a rejection. Third, in an effort to produce more technically robust patents, the restrictions on amending patent documents after filing would be relaxed so that an applicant who adduces proof of patentability could incorporate the additional information into the issued patent. Aside from derailing questionable patents, this regime would lead to more efficient patent examination, improved patent quality, better inventions, better disclosure, and fewer obstacles to innovation.