IP: Supreme Court Poised to Make Fundamental Change to the Nature of Patents

Last week, the Supreme Court heard arguments in Microsoft v. i4i, a case regarding the appropriate standard of proof juries should use for validity challenges in patent litigation. Currently, courts require a heightened standard of “clear and convincing evidence.” Microsoft seeks to change the standard to a “preponderance of evidence.” While the question of which standard of proof to use may seem trivial to the casual reader, in patent litigation it is critically important. In fact, the Supreme Court's decision in Microsoft v. i4i could change the fundamental nature of patents in the United States.

Patent Procurement and Litigation

To obtain a patent, an inventor files an application with the United States Patent Office. A patent examiner reviews the invention disclosure against existing patents and articles (referred to as the “prior art”) to determine whether the proposed invention is new and non-obvious. If the patent examiner concludes that the invention meets the conditions of patentability, the Patent Office issues a patent. Because of the limited resources of the Patent Office however, a patent examiner cannot review all of the prior art. As a result, the Patent Office inevitably issues some patents for inventions that are not new and non-obvious.