Patent Reality Checks: Eliminating Patents on Fake, Impossible and Other Inoperative Inventions

Abstract

The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that might claim non-existent or inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several administrative and legislative measures directed toward the elimination of patents claiming inoperative inventions including (1) increasing USPTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into the examination process, and (4) increasing penalties for fraudulent conduct before the USPTO. In addition to addressing inoperative inventions, some of these reforms could help to alleviate broader enablement concerns that have been identified by scholars over the past decade. Given the serious consequences that these issues have on markets and innovation, such measures merit serious consideration by the USPTO and Congress.

Keywords: patent, inoperative, enablement, fraud, Theranos, examination, USPTO