More Eyeballs in the Patent Office?

The U.S. Patent and Trademark Office flirts with opening up their semi-secretive approval process:

The patent office is experimenting with the concept of opening the examination process to outsiders, inviting public peer reviews. On June 15, Dudas said, the patent office will begin a pilot project for open reviews of software patents. The patents in the pilot program will be posted on a Web site, and members of the public with software expertise will be allowed to send the patent office technical references relevant to the patent claims.

Right now, the pilot project to allow public review of information technology patent requests is only for cases where the applicant has given approval. "Legislative changes would be required to have public peer views without an applicant's approval, and thus to extend the concept to other fields." Under the current system,

an inventor is required to explain why a new product is sufficiently original to deserve the exclusive rights that patent protection conveys. But the applicants have a lot of discretion. The supporting information, Dudas said, ranges from "almost nothing" to what he called "malicious compliance," which he described as boxes and boxes of background information intended mainly to obscure the nugget of an invention in the patent application."

Sounds like a job for Linus' law.

Comments

[Mike Laursen]

They should just post all software patent applications to Slashdot. On second thought, it would be very cruel to subject anyone at the Patent Office to reading all the comments from the Slashdotters.

[Lamar]

"More Eyeballs in the Patent Office?"

They're cheaper than brains.

[Warren]

It would change the dynamics but wouldn't alter the situation of patents belonging to the highest paid lawyers. It might give greater exposure to how corrupt patent law is.

[Dave W.]

"an inventor is required to explain why a new product is sufficiently original to deserve the exclusive rights that patent protection conveys"

Unless the law has changed recently, this is flat out wrong. The burden is on the patent office to object. Often an applicant will choose to explain why an invention is considered new, either in the patent application, or in response to a rejection, but this is not required. for example, even if (read: when) your application is rejected initially by the Patent Office, you can respond by pointing out that the rejection is simply wrong, factually or legally (assuming it is), without hyping the invention.

My take is that they are trying to cut back on patents in a bad way here. they are trying to get the inventor to say a lot about why the invention is better than the "prior art" that the inventor happens to know about, so that later on, when other "prior art" the inventor didn't know about emerges, the patent can be attacked by saying the inventor didn't appreciate what was truly good about his invention on day 1.

Let me illustrate with an example:

Let's say the Wright Brothers somehow didn't know about hot air balloons when they invented the aeroplane. So they go to the Patent Office and hype their invention in terms of why it is better than automobiles and railroads. They stress that the planes can fly. Then, later on, after the patent is issued, they go to sue their competitor, who makes aeroplanes, on the patent. The competitor knows about the balloons, and argues that the Wright Bros. patent is no good because they thought the big deal was that planes could fly, and it turns out that the bare act of flying is in the "prior art."

This is no good. One never knows all the prior art, and, in a given case, people will disagree on which piece of "prior art" is the most relevant anyway. It is true that you invention needs to be distinguished from the prior art, but Comish Dudas is not just suggesting that the invention be distinguished, but that the coolest, gee whiz features be correctly identified. You can't do that unless you know what all the prior art is, and one can never know what all the prior art is, at least in the early going.

Patents need to be cut back, but this is just not the way to do it. It is haphazard, and forces an unfair guessing game.

I do like that Dudas is stripping secrecy from the application process. better still might be to do away with examination all together, although I think examination has more value than I used to. now that the patent databases are computerized, there seems to be more predictability in the examination process than there was 10 years ago. I never thought I would hear myself say that, either.

[Lamar]

I think it is a good thing to open the door to potential disputes before a rebuttable presumption is created. A lot of times a crappy patent slips by the incompetent/overworked examiner, then is unsuccessfully challenged in court because the poor work of the examiner created a presumption.

If we can open the floor to objections outside the patent office, perhaps disputes will be resolved more appropriately.

[Dave W.]

I think it is a good thing to open the door to potential disputes before a rebuttable presumption is created.

Or take away both the examination and the presumption.

The thing to look at here is how often the "best" prior art or other arguments are hashed out at the patent examination level. this is a hugely difficult variable to get a handle on for several reasons: subjectivity, lack of empirical data collection, litigation driven distortions about what arguments were best. Despite these difficulties, it is undeniable that patent examination is useless if the "best" arguments don't usually get fleshed out by patent examination. My rough sense as a working professional is that the "best" arguments don't get fleshed out by the examination process.

What is worse, the "best" arguments are probably usually obviousness arguments. that is, arguments to the effect that, "yeah you are technically different than what went before, but just not very impressive or astounding or ingenious or whatever." Although obviousness has been riding at kind of a low ebb for a couple decades now, it looks like SCOTUS may have breathed some new life into the doctrine with its KSR v. Teleflex decision at the end of April. they want obviousness to be more of a "commonsense" determination. i hate to sound elitist, but I trust the commonsense of judges, more than patent examiners, especially when the issue is who is a genius and who is merely bright.

[grumpy realist]

Dave W., assuming that a judge is going to be able to make a better analysis of the patentability of something rather than one of the investigators specializing in the area is, well, a novel take on the whole affair.

You really need someone who a) knows the technology b) knows the competing-and-already-existing-technology out there, c) has some expertise in the field so he knows what the POSITA level is, and d) has a knowledge of all the possible 102 rejection areas. Do you think a judge or a patent examiner is more likely to have this information at his fingertips?

If all the decisions get dumped on the judges, expect legal costs to shoot way, way up as everyone ends up having to put together more and more depositions and explanations explaining the technology to the judge. Also expect everything to take much more time.

[Dave W.]

Dave W., assuming that a judge is going to be able to make a better analysis of the patentability of something rather than one of the investigators specializing in the area is, well, a novel take on the whole affair.

Engineering school teaches you what works and what doesn't. Engineering school teaches mechanistic relations that happen according to equations, or great agglomerations of equations (think genetic molecules or finite element analysis).

The question of whether something is a pedestrian advance or a smart advance is something different entirely. It is subjective, touchy feely, something akin to an essay contest. I think that one who is used to judging essay contests can learn a narrow band of technology temporarily to make a decent judgement about the ratiocinative quality of an inventor's work. I do not think that one well-schooled in science can temporarily learn to judge an essay contest well.

Of course, technically minded people tend to be in denial about this subjective, mental-merit aspect of patent law because it diminishes their role in the process. It is easy to think that the things you are not good at are not important. Easy, but selfish and wrong.

If all the decisions get dumped on the judges, expect legal costs to shoot way, way up as everyone ends up having to put together more and more depositions and explanations explaining the technology to the judge.

Legal costs don't have much to do with this. rather, if a little money only is at stake, then the parties mediate their disputes amicably, without a whole lot of court intervention. If an intermediate amount of money is at stake, then a judge may be consulted to the extent of discovery and summary judgment decisions before a case settles. If even more money is at stake, then there will be a trial and maybe even an appeal. If pharmaceutical company levels of riches are at stake, then there will be thirty lawyers and the appeal and nobody will be complaining about costs. Eg:

http://fedcirpatentcaseblurbs.blogspot.com/2007/05/21-may-07-precedential.html

The patent court stands very much in the shadow of the private market for patent dispute settlement. Unless you are a patent atty, then you probably don't hear much about the private market in patent dispute settlement. It goes on behind closed doors and is confidential. It is also efficient and pervasive, compared to the courtroom activities. If the only patent cases you hear about are the ones settled by judge or jury, then you are just looking at the tip of the iceberg.

[D.A. Ridgely]

Okay, new rule: no H&R posts on patent law or any other topic that draws Dave W. like trailer camps draw tornados. Further, no posts on any topic Dan T. can troll on. In other words, time to shut this puppy down!

[Dave W.]

Wriggley's! Always a pleasure. Somebody said something interesting about me today. They said:

there is nothing stopping dave w, for example, from building his own community - i've contributed to the building of several - except that it lacks the existing population base required for someone of his interaction type. in other words, there's no audience, which would defeat the purpose of his performative interactions.

and I am sitting there thinking: "his interaction type"?? "his performative interactions"?? It is sort of like that episode of Sealab 2021, where Marco absentmindedly starts munching on the whale cancer and they tell him, "Marco, you just ate whale cancer!" And Marco, as voiced by Erik Estrada, replies with utmost urgency in his volume and inflections, "I DON'T EVEN KNOW WHAT THAT MEANS!"

What is it about me that makes me so special, so non-obvious? Doesn't everybody basically think like I do? How can one force their mind to go in any other way? Do others have to consciously reach a metaphorical hand into their own noumenal space and guide their thoughts to avoid sliding into performativeness , or, worse yet, some kind of disfavoured "interaction type?" Am I that mean-spirited? Why do people h8 me when I don't h8 them? Why do they call me names when I don't call them names? Some ppl say I am stoopid, but I just don't feel that stoopid. Some ppl say I am crazee, but I just don't feel crazee. how can a stoopid or crazee mind even recognize its own problems -- wouldn't the stoopid or crazee, as a matter of definition, just get in the way? Maybe, for performative ol' me, attaining self-awareness would be like a cat chasing its tailor or a toddler trying to stomp on his own shadow. I will never make it.

Even joe mostly ignores me. He talks to people who openly try to hurt his feelings, but he ignores me, even though I (srsly) say nice things about him. at some point, you just want to step back and say, "what's wrong with me?" So, anyway, at that point in my musings, I usu. just decide that it is everybody else who is slightly dysfunctional and I am fine, even if a bit performative and prone to non-standard modes of interaction. Perhaps non-standard, but I feel like I get my points across, such as they are. It is tough to tell if the real point of contention with me here is the substance of my thoughts or the way I express them.

Build a community? I don't need a community, I guess. I have myself and my family and my patent law blog, and all my record albums I made (the 2006 one is really gr8 even though you didn't like the one song), and my sound opinions on patent law, food labeling regs, the unjustness of the Iraq War, a pervasive sense of political paranoia and my health. When you have all that, then there is no room for a community probably. besides, why would I want a community, when no community wants me. Now that would be crazee!

[Geico Caveman]

Yea, I have a response... Uh... What?

[edna]

where the benefit really flows here is the prevention of double patents, interferences, and nuisance patents. when you submit an application, the examiner will typically run a patent search for prior art. he will not in general look elsewhere. so even if the application is for something you could have bought for years at wal-mart, if it's not a patented thing, it generally will not come up in the search.

the patent applicant is expected to reveal that you can buy this gizmo at wal-mart but often doesn't. the patent issues, it's clearly no good, but it is presumed valid for the purposes of funding patent attorneys. if a big company has the p.o.s. patent, they can then use it to sue some smaller fish and put him out of business. yes, they wouldn't prevail in court, but you're laying out close to a million bucks to defend yourself before a judge ever looks at it. i lost a business exactly this way- a company saw our product at a trade show, patented it, then sued us. we ran out of money before the discovery process was complete. a fat lot of good a judge would have done.

with an open system like the one used in europe, the p.o.s. patent never issues because the application is made public and there is a comment period. if the gizmo is being sold at wal-mart, someone will tell the examiner. distributed intelligence and all that.

unlike dave, i don't make money from having the legal system rigged like this.

[Dave W.]

i lost a business exactly this way- a company saw our product at a trade show, patented it, then sued us.

Gentle suggestion to people in this position*: Keep documentation of what you reveal at a trade show. A provisional US filing, the week prior to the trade show (or other initial public disclosure), with some nice photographs is not a bad idea, either. You can prepare it yourself, using your own words and photographs and a copy of the drawings (that you previously sent to the machine shop), and the filing fee is only a hundred bucks.

then when BigfatCo comes around with its patent 4 years later, and sees your provisional filing and record of attendance at the trade show the following week, all prior to their priority date, they will cut you in, instead of cutting you out.

* disclaimer: this post is not legal advice and doesn't make a reader into a client of mine. If you want to do it the really good way, hire a patent atty, of course.

[Dave W.]

unlike dave, i don't make money from having the legal system rigged like this.

and besides, like I said above, I agree that the proposed open system was a good thing. That said, I think it will result in more work (and remuneration!) for patent lawyers and examiners, rather than less.

[Lamar]

"More Eyeballs in the Patent Office?"

Any kind of balls would be a good start.

[edna]

"Keep documentation of what you reveal at a trade show."

the product had been on the market for over two years at that point, and we had an application in nearly three years before; their patent still issued first. doesn't matter, you still have to get it to the the point where a judge will sift through all the dirt that the lawyers kick up in the initial lawsuit filings. the documentation you speak about is just a few more pages on the already-considerable pile.

once suit has been filed against you, you've already lost no matter how bad the plaintiff's case, as long as the plaintiff has money and you don't.

compare with the cost of being able to send a brochure to an examiner during the time where the application is still being examined and a presumed-valid patent hasn't issued.

[Dave W.]

once suit has been filed against you, you've already lost no matter how bad the plaintiff's case, as long as the plaintiff has money and you don't.

yeah, well, I represented small time defendants for a large part of the phase of my mini-career as an ip litigator. i went up against lawyers who were probably making twice as much as me per hour, and whose litigation budgets certainly outstripped mine by more than that. i got good results, good settlements. I put in a lot of free work. I did it mostly because I really love ip litigation and I am good at it, and because I hadn't been happy in larger organizations. I worked harder than I ever have before or since. I am proud of my service in that phase of my career.

And, after a couple years, I couldn't do it any more. No co-operation in the defense effort. Obstruction (and not even smart types of obstruction). Pressure to bend the truth. No gratitude for good results. No thanks for hard work. No referrals. Unbelievable cynicism about my work. Overly aggressive review of my (relatively tiny) billings. (btw, The billings were tiny because I could supplement with patent prosecution and some work on the plaintiff side for tm clients to some degree.)

So, if you ever wondered why it is hard to find a smart defense atty willing to work for a decent price, just remember that these lawyer-client relations issues work both ways. I don't enjoy negotiating contracts and writing patent applications as much, so far as the substance of the work goes, but then again, nobody craps on my head now like small-time defendants in patent suits used to do.

[Robert]

What bothers me about "obviousness", especially when it comes to "in view of" review, is its perverse indentive against work. It favors the accidental invention over the product of systematic experimentation.