When Patents Attack

[Cheesetogo]

Anyone keep up with the America Invents Act? I'm not really sure whether it's likely to help or not, but I guess it's the first major change to the system since 1952.

http://money.cnn.com/2011/06/24/technology/patent_reform_bill/index.htm

 

[Lithium381]

Anyone keep up with the America Invents Act? I'm not really sure whether it's likely to help or not, but I guess it's the first major change to the system since 1952.

http://money.cnn.com/2011/06/24/technology/patent_reform_bill/index.htm

sure that saves someone from retroactivly being screwed, but the system is WAY to vague on the definition. I could likely get a patent for "a round device used to facilitate movement" and have wheels and pullies and gearshafts and everything covered.... i didn't invent any of that

 

[Zorba]

I have a patent for a very specific type of cooling feature on a turbine shroud with a borescope port. It is only applicable to very high temperature engines with shrouds that span multiple stages (as in I know of one application for my patent). The first claim on that patent (not written by me) is something like "An embossment with internal or external cooling features." There are a total of 77 claims, because I poked a hole in a spot no one else had ever poked a hole. So it isn't just software patents that are out of control and it isn't just the US, that patent was approved in many other countries as well.

That being said, I have several other patents that I think are high quality and protect the company's investment. Those patents were written much more narrow and were really on the cutting edge.

I am not sure I believe in any software patents, but if there are some they should be limited to very specific things. For example, the company I used to work for was going to patent the algorithm used to store a huge amount of engine parameters and predict when certain maintenance needed to be performed. There was a ton of work put into this software and it would be a massive asset to the company, but I think only the algorithm itself should be patentable not the idea.

 

[RabidMongoose]

Anyone keep up with the America Invents Act? I'm not really sure whether it's likely to help or not, but I guess it's the first major change to the system since 1952.

http://money.cnn.com/2011/06/24/technology/patent_reform_bill/index.htm

No, that doesn't change the patentability of software.

 

[RabidMongoose]

4) Increase the funding to the patent office (oh noes! more government spending!), and require them to spend more time on each patent. If this brings back the backlog of patents, so be it. Patent pending infringement is backdated to the patent application anyway.

The USPTO is designed to be self-funded, but it hasn't been allowed to keep the funds that it generates. There are tons of patent fees, from filing an application to extensions to maintenance costs of issued patents. However, all of this money goes back to the treasury and then the USPTO is budgeted a portion of it by Congress. So if the USPTO was given the ability to set and collect its own fees, that would probably go a long way.

Also, requiring patent examiners to spend more time on a patent is useless since there is so much turnover in the examiner corp. They need to be able to keep examiners for a longer period of time instead of having so many leave every 2 years. The quality of the average examiner is very poor.

 

[alphatarget1]

I blame lawyers.

 

[Sho'Nuff]

The patent system in this country is just screwed up beyond belief and repair. It's a serious problem that's hurting industries in this country and preventing them from coming up with new ideas and innovation.

Care to explain? As a patent attorney I hear a lot of folks making the same claim, but rarely do those individuals have any substance to back it up.

FWIW, the basic premise of patent law ("Congress shall have power . . . To promote the progress of. . . useful arts, by securing for limited times to. . . inventors the exclusive right to their respective. . . discoveries.") is in the constitution, and is based on the provision of exclusive rights to inventors. Since that time, IP has been treated as property that can be freely transferred between parties.

That being said, the major complaint I hear about the patent system is about how patents prevent others from innovating. This is a typical comment made when some news source (NPR, CBS, etc.) reports on a particular patent case where some big company sued a smaller company for patent infringement and won. Many folks seem to think that this is somehow inherently wrong, and stifles innovation. But given the origins and intent of the patent law, I believe that the opposite is true. Specifically, I believe that the patent law as presently formulated operates specifically as intended by the founding fathers. That is, it provides exclusive rights to inventors for a limited time period, AND it encourages creativity and invention by providing motivation in the market place for companies and individuals to seek out alternative methods of accomplishing a goal. Moreover, the trailing return to the storehouse of public knowledge (i.e., the contribution of expired patents and published applications to the public) is enormous.

As to the patent "system" as a whole, there is no question that the examination process could be improved. Unfortunately, most of those improvements cannot be implemented by the USPTO, as it has relatively limited agency authority (don't beleive me? Read up on the Tafas v. Dudas challenge to the PTO's rulemaking authority in 2007-2009). Thus, if significant changes to the examination process are to be made, they must be implemented by federal legislation.

You may be interested to know that in the past 3-4 months, the Senate and the House have each passed bills that are aimed at reforming certain aspects of the patent system. Those bills have some common provisions, so there is some expectation that we will see patent reform legislation passed this year.

Unfortunately, there is not much in either bill that will be perceived by the public as being aimed providing an immediate improvement to patent quality. The one exception is that one (perhaps both) bills would add a post allowance (maybe post grant) review process that would allow the public to submit prior art against to be issued (or newly issued) patents. This is similar to the opposition proceeding that is currently used in Europe. Apart from that change, however, there is little in either bill that smacks of improvements to patent quality apart from (if my recollection is correct) terms that would limit or eliminate raids on the PTO's funding. In the past, congress has appropriated funds that were paid by inventors into the patent system (and which were intended to support the examination function) and applied the to other government programs. Those raids have hamstrung the ability of the USPTO to hire and train examiners, which has lead to further increases in the application backlog and increased pressure on the USPTO to move through cases (all of which lead to decreases in patent quality).

 

[Sho'Nuff]

That being said, I have several other patents that I think are high quality and protect the company's investment. Those patents were written much more narrow and were really on the cutting edge.

As a patent attorney, this is an interesting statement to me. "Protect the company's investment" and "narrow" are not usually used in the same sentence when describing a patent, particularly when describing "cutting edge" technology. Not that a narrow patent necessarily can't protect an investment. It's just an unusual strategy.

 

[Sho'Nuff]

Also, requiring patent examiners to spend more time on a patent is useless since there is so much turnover in the examiner corp. They need to be able to keep examiners for a longer period of time instead of having so many leave every 2 years. The quality of the average examiner is very poor.

One reason there is so much turnover is that many examiners do not feel that they have enough time to spend on each case and thus, the USPTO's production requirements are unreasonably high. As a former examiner, I think that is a hogwash argument. But I must be wrong because most examiners seem to disagree with me.

 

[Sho'Nuff]

Anyone keep up with the America Invents Act? I'm not really sure whether it's likely to help or not, but I guess it's the first major change to the system since 1952.

http://money.cnn.com/2011/06/24/technology/patent_reform_bill/index.htm

The only "major" chanvge to the patent system in either bill is the conversion from a first to invent to a first to file system. All of the other proposed changes are incremental.

 

[Sho'Nuff]

On the other hand you have countries like China, where patent protection is non-existent and anyone can copy anything and everything. This is one of the reasons there's no innovation in China - no one has an incentive to work hard on something new if someone is just going to rip it off as soon as they can.

You need to check your facts. China certainly does have some IP issues, but to say that it has no patent system and entirely disrespects IP is just wrong.

 

[Sho'Nuff]

1) As suggested above, require that code be published with software patents, and require that the code in said patent be substantially new.

Code itself is protectable by copyright, which is odd because it means that software is one of the few things that can be protected by both copyright and patent protection. Personally, I think congress needs to correct that issue.

2) Bring back the patent courts, and make them field-specific. Judges should be able to have some technical understanding of the case they are presiding over. It would be unreasonable to expect a judge who had a humanities and law education his whole life to be able to make himself an expert in computer science (or chemistry, or mechanical engineering) in the short amount of time they have to view a single case. Yet this is what we are asking them to do for every one of these.

The board of patent appeals and interferences uses administrative law judges that, to a large extent, preside over technological areas with which they are familiar. As to providing patent judges for each technical area, that is an impossible task. The vastness of technology is so great that you would need millions of judges who are experts in very small areas of technology. Where are you going to find those people? And more importantly, who is going to pay them?

3)If a plaintiff wants to serve notice of a suit, they must inform the defendant of what patent and what specific features of that patent they are accused of breaking in the notice to the lawsuit, just as police must inform a suspect of why they are being arrested.

Patents suits are initiated by filing suit against a defendant, usually in a federal district court. Per the federal civil rules of procedure (FRCP), the complaint must include a short and plain statement of the claim showing that the plaintiff is entitled to relief. See FRCP rule 8(a)(2). In a patent case, that statement will typically state that the defendant infringes XYZ patent 9implying that all claims of the patent are at issue), and it may also recite the specific claims of the patent that are being asserted. Per FRCP rule 4(c)(1), the complaint is presented to the court, and if it is approved the court issues a summons to the plaintiff for service on the defendent. To properly serve the defendant, the plaintiff must include a copy of the complaint with the summons. Thus, current FRCP requires the plaintiff to inform the defendent of the claim for which relief is sought.

4) Increase the funding to the patent office (oh noes! more government spending!), and require them to spend more time on each patent. If this brings back the backlog of patents, so be it. Patent pending infringement is backdated to the patent application anyway.

Someone has already addressed this point accurately, so I will not rehash it here.

5) This last one I'm not sure about, but perhaps make patent squatting illegal. Force plaintiffs to demonstrate that they are making a concerted effort to bring that patent to market. This one might be very tricky to enforce, so I'm not sure I like it.

As I noted in a prior post, U.S. patents have always been treated as transferrable property. If congress were to propose a law prohibiting the transferability of patents in the future, it is likely that current patent owners would challeges that proposed law as an improper taking. How the courts would resolve that issue is unclear, as good arguments could be made on either side of the issue.

 

[Zorba]

As a patent attorney, this is an interesting statement to me. "Protect the company's investment" and "narrow" are not usually used in the same sentence when describing a patent, particularly when describing "cutting edge" technology. Not that a narrow patent necessarily can't protect an investment. It's just an unusual strategy.

It was more narrow than "An embossment with a cooling feature," but also completely locked out every possible way of actually using our design ideas, basically protecting the entire field for our company.

Broad patents do nothing except get through out of court and make patent attorneys out of my fighting for and against them.

For example a broad patent might have been "Using a non-metallic shroud in a turbine," which would've been stupid because that idea has been around forever and the mere idea should not be patentable. Instead we got six patents on every design feature that was needed to actually make the idea work, which is something that was new and innovative and took years of engineering. So if you want to put cooling flow into a non-metallic turbine shroud (required), then you better start paying me royalties . Or if you actually want to attach it to an engine, time to pay up as well.

 

[mchammer187]

One reason there is so much turnover is that many examiners do not feel that they have enough time to spend on each case and thus, the USPTO's production requirements are unreasonably high. As a former examiner, I think that is a hogwash argument. But I must be wrong because most examiners seem to disagree with me.

the biggest problem with patents not just software ones IMO is there is no real disclosure requirement of why something is patentable. 35 USC 101 exists but the uspto has moved away from making any disclosure of why you are claiming certain things because it is very taboo to make any kind of rejection under 101. I have heard this directly. If your art doesn't give motivation that is a huge problem but if the application does not than its ok so if you can't think of a reason to do something off the top of your head than do a cursory search because that is all the time you have about 6-8 hours to make an initial assessment of patentability on an application which includes searching and writing up and however amount of reading on an application you can do. I don't know why making a 101 rejection is the way it is since an answer to when and why something is done for each and every claim independent or not would make each patent much easier to search and make every patent issued under those requirements that much stronger.

 

[RabidMongoose]

One reason there is so much turnover is that many examiners do not feel that they have enough time to spend on each case and thus, the USPTO's production requirements are unreasonably high. As a former examiner, I think that is a hogwash argument. But I must be wrong because most examiners seem to disagree with me.

That's because the average examiner is just unproductive. You're a good example of what I'm talking about - you're a former examiner who is now a patent attorney. That itself describes so many former patent examiners. The good ones will just leaves, resulting in an incredible amount of turnover at the USPTO.

 

[RabidMongoose]

That being said, the major complaint I hear about the patent system is about how patents prevent others from innovating.

I would actually agree with a lot of the complaints that people have about the patent system with regard to software patents, but I think that the practicality of addressing these problems would be too difficult and arbitrary. For example, a lot of software patents are written abstractly and are just claiming very broad features, but neither the disclosure nor the claims correspond to more defined steps to accomplish such feature. It's easy to get the USPTO to allow this type of disclosure.

I think that it would be better if examination would require more detailed algorithmic processes to be claimed - not the actual code, but at least put in more limitations with regard to the algorithm itself. Of course, this would be very difficult to enforce at the USPTO and it may be too arbitrary to enforce. Thus, the USPTO will just allow it and it may get invalidated in the courts after spending millions of dollars.

Someone mentioned that if he were a good computer scientist then he would come up with patent ideas. Well, I would tell him that you don't need to be a good computer scientist to come up with patentable ideas. You just need to be creative. I could sit down and come up with a patentable idea in 1 minute.

 

[RabidMongoose]

It was more narrow than "An embossment with a cooling feature," but also completely locked out every possible way of actually using our design ideas, basically protecting the entire field for our company.

Broad patents do nothing except get through out of court and make patent attorneys out of my fighting for and against them.

For example a broad patent might have been "Using a non-metallic shroud in a turbine," which would've been stupid because that idea has been around forever and the mere idea should not be patentable. Instead we got six patents on every design feature that was needed to actually make the idea work, which is something that was new and innovative and took years of engineering. So if you want to put cooling flow into a non-metallic turbine shroud (required), then you better start paying me royalties . Or if you actually want to attach it to an engine, time to pay up as well.

As horrible as it is, that broad claim would do more for your company than the more narrow claims, assuming that you could get that broad claim allowed. From a business perspective, I'd rather have an independent claim reciting the "using a non-metallic shroud in a turbine" and then go with dependent claims for the various design features or just other applications on those various design features.

 

[mchammer187]

That's because the average examiner is just unproductive. You're a good example of what I'm talking about - you're a former examiner who is now a patent attorney. That itself describes so many former patent examiners. The good ones will just leaves, resulting in an incredible amount of turnover at the USPTO.

I disagree with your assessment. The average examiner leaves because they want more money not because they are better. On the patent prosecution side I've seen horrible examiners just go for a law degree because for a long time the uspto would pay for it so they could earn an extra 100k. There are just as many bad examiners as bad attorneys out there.

It's just the system is set up so that examiners spend a lot of time working on things that are ultimately not improving the quality of the patent such the harder your claims are to search than the more likely the attorney is to be rewarded. claims that are verbose yet vague at the same time is what gets through.

 

[Zorba]

As horrible as it is, that broad claim would do more for your company than the more narrow claims, assuming that you could get that broad claim allowed. From a business perspective, I'd rather have an independent claim reciting the "using a non-metallic shroud in a turbine" and then go with dependent claims for the various design features or just other applications on those various design features.

I never said the broad claim was worse for the company, I just think it is a misuse of the patent system and is done to either bully small companies or to enrich patent attorneys. The patent attorney that wrote my patents with very broad claims even told me "Those [broad claims] would be thrown out, but I like to claim everything I can think of."

For example, on my embossment cooling patent. I seriously doubt I was the first person in the world to dream up the idea of putting some type of cooling on some type of embossment, I am sure there are several products that already have this. The stuff I really did invent started around claim 25 of 77, though. Something like "An enbossment of a turbine engine or other device with a high temperature working fluid with a cooling feature."

Just like I nor my company invented the idea of using a non-metalic shroud in a Turbine, so making that claim would've been false but companies do it all the time and get away with it. Just like blackboard getting a patent for "learning on the internet. I did invent how to cool and support those non-metalic shrouds, which we did claim.

 

[Sho'Nuff]

I never said the broad claim was worse for the company, I just think it is a misuse of the patent system and is done to either bully small companies or to enrich patent attorneys. The patent attorney that wrote my patents with very broad claims even told me "Those [broad claims] would be thrown out, but I like to claim everything I can think of."

That is a common strategy amongst patent lawyers. The idea is to broadly claim the invention initially, and let the PTO do its thing and whittle the claims down. It is harder to expand the scope of initially narrow claims than it is to narrow the scope of initially broad claims.

That said, i'm willing to bet there was at least some kernel of your invention in the base independent claims.

Did your PA perform a prior art search?

 

[Sho'Nuff]

That's because the average examiner is just unproductive. You're a good example of what I'm talking about - you're a former examiner who is now a patent attorney. That itself describes so many former patent examiners. The good ones will just leaves, resulting in an incredible amount of turnover at the USPTO.

To some degree I think you are right, and to some degree I think you are wrong. I think the biggest reason why there is significant turnover at the PTO is boredom. That one of the main reasons why I left the office (the other being that my wife wanted to move to New England). Simply put, I was sick and tired of reading about the same technology day in and day out for years on end.

That said, I do know quite a few examiners that are both "good" and "lifers." Some of them even have law degrees.

FWIW, I will go on the record as saying that patent examining is a sweet, sweet gig if you can get past the boredom. Few jobs offer reasonably good pay (>100k after 3-4 years) coupled with an excellent work/life balance.

 

[RabidMongoose]

To some degree I think you are right, and to some degree I think you are wrong. I think the biggest reason why there is significant turnover at the PTO is boredom. That one of the main reasons why I left the office (the other being that my wife wanted to move to New England). Simply put, I was sick and tired of reading about the same technology day in and day out for years on end.

That said, I do know quite a few examiners that are both "good" and "lifers." Some of them even have law degrees.

FWIW, I will go on the record as saying that patent examining is a sweet, sweet gig if you can get past the boredom. Few jobs offer reasonably good pay (>100k after 3-4 years) coupled with an excellent work/life balance.

It's not like being a patent prosecutor is incredibly exciting. The burnout rate for patent prosecutors is incredibly high with most going in-house relatively quickly when compared to other types of lawyers. Writing applications and reading ridiculous Office actions is pretty boring to most patent prosecutors. Maybe you deal with it if you're in an area where there aren't many tech companies, but if you're in places like Silicon Valley, then the attrition rate of patent prosecutors in law firms due to people going in-house is pretty high.

I do think that some patent examiners are good, but a lot of them aren't very intelligent. They have poor technical skills and don't write particularly well. But that's expected when so many patent examiners have very little experience.

There are horrible patent attorneys, too. And a lot of them end up at the USPTO. In the last hiring cycle, a lot of laid off patent attorneys ended up applying there, too.

 

[RabidMongoose]

I never said the broad claim was worse for the company, I just think it is a misuse of the patent system and is done to either bully small companies or to enrich patent attorneys. The patent attorney that wrote my patents with very broad claims even told me "Those [broad claims] would be thrown out, but I like to claim everything I can think of."

For example, on my embossment cooling patent. I seriously doubt I was the first person in the world to dream up the idea of putting some type of cooling on some type of embossment, I am sure there are several products that already have this. The stuff I really did invent started around claim 25 of 77, though. Something like "An enbossment of a turbine engine or other device with a high temperature working fluid with a cooling feature."

Just like I nor my company invented the idea of using a non-metalic shroud in a Turbine, so making that claim would've been false but companies do it all the time and get away with it. Just like blackboard getting a patent for "learning on the internet. I did invent how to cool and support those non-metalic shrouds, which we did claim.

Oh, OK. I agree with you, but I'm pretty cynical about the whole system.

 

[Zorba]

Did your PA perform a prior art search?

I know there was a prior art search for the narrow claims, which I was involved in. I assume there was a search for the broader claims, but I wasn't involved in it so I don't know for sure.

To some degree I think you are right, and to some degree I think you are wrong. I think the biggest reason why there is significant turnover at the PTO is boredom. That one of the main reasons why I left the office (the other being that my wife wanted to move to New England). Simply put, I was sick and tired of reading about the same technology day in and day out for years on end.

I think this is true of most government examiners. Not many people who are good and ambitious get much out of reviewing other people's work for years on end. I see the same thing with FAA reviewers (in the certification offices), the vast majority of them are people that couldn't find/keep a job anywhere else. The handful that are really good are people who were design engineers for 20 years and decided they wanted a work/life balance. Sometimes they'll get a new kid straight from college that wants to do a good, usually they only last 18 months or so.

 

[Thump553]

Could someone who knows patent law explain to me why in the world we even have patents on software instead of relying upon copyrights? Apparently that was the system until 1992 and since then the only thing that has exploded is litigation and needless expense.

The real problem is China's outright theft of intellectual property. Given the fact we have a broken system I don't see how China could be persuaded to go on board anyway.